Completion of Examination

37 CFR 41.102  Completion of examination.

Before a contested case is initiated, except as the Board may

otherwise authorize, for each involved application and patent:

(a) Examination or reexamination must be completed, and

(b) There must be at least one claim that:

(1) Is patentable but for a judgment in the contested case,

and

(2) Would be involved in the contested case.

An interference should rarely be suggested until examination is completed

on all other issues. Each pending claim must be allowed, finally rejected, or canceled. Any

appeal from a final rejection must be completed, including any judicial review. Any

petition must be decided.

Example 1

An applicant has one allowed claim directed to invention A, which is

the same invention of another inventor within the meaning of

pre-AIA 35 U.S.C.

102(g)(1)

and

pre-AIA 35 U.S.C. 291

, and has

rejected claims directed to different invention B. If the rejection is contested, the

application is not yet ready for an interference. Restriction of the application to

invention A, followed by cancellation of the claims directed to invention B would remove

this impediment to declaring an interference.

Example 2

A patent has a claim to a species. An applicant has claims to the

species and to a genus that includes the species. The examiner has allowed the species

claim, but rejected the genus claim. The applicant suggests an interference with the

patent. The interference will generally not be declared until the applicant resolves the

status of the genus claim by, for example, appealing the rejection or canceling the

rejected claim. An applicant may expedite the process of having the interference

declared by canceling the genus claim from the application.

Two grounds of unpatentability receive particularly close scrutiny before

an interference is declared. Enforcement of the written description requirement under

35 U.S.C.

112(a)

, and the late claiming bars under

pre-AIA 35 U.S.C.

135(b)

are important to preserve the efficiency and integrity of

interferences

cess of having the interference

declared by canceling the genus claim from the application.

Two grounds of unpatentability receive particularly close scrutiny before

an interference is declared. Enforcement of the written description requirement under

35 U.S.C.

112(a)

, and the late claiming bars under

pre-AIA 35 U.S.C.

135(b)

are important to preserve the efficiency and integrity of

interferences. See

37 CFR

41.201

, “Threshold issue.” See, e.g.,

Berman v.

Housey,

291 F.3d 1345, 1354, 63 USPQ2d 1023, 1029 (Fed. Cir. 2002).

RESTRICTION IN APPLICATIONS WITH INTERFERING CLAIMS

Ordinarily restrictions are limited to situations where (A) the

inventions are independent or distinct as claimed, and (B) there would be a serious

burden on the examiner if restriction is not required (see

MPEP § 803

). Potential

interferences present an additional situation in which a restriction requirement may be

appropriate. Specifically, restriction of interfering claims from non-interfering

claims, or from unpatentable claims whose further prosecution would unduly delay

initiation of an interference, can be an appropriate use of restrictions under

35 U.S.C.

121

. An Interference Practice Specialist (IPS) should be consulted

in making and resolving restrictions under this heading. An applicant may, of course,

also choose to cancel claims and refile them in a continuation application without

waiting for the restriction requirement.

A.

Non-Interfering Claims

Patent term adjustments may be available for patents whose issuance

has been delayed for an interference. See

pre-AIA 35 U.S.C.

154(b)(1)(C)(i)

. A claim that does not interfere, by definition,

is directed to a patentably distinct invention compared to a claim that does

interfere. Leaving a non-interfering claim in an application going into an

interference creates an unwarranted delay in the issuance of claims to the

non-interfering subject matter. As far as the public and the Office are concerned,

there is no justification for not issuing the non-interfering claims promptly

definition,

is directed to a patentably distinct invention compared to a claim that does

interfere. Leaving a non-interfering claim in an application going into an

interference creates an unwarranted delay in the issuance of claims to the

non-interfering subject matter. As far as the public and the Office are concerned,

there is no justification for not issuing the non-interfering claims promptly. An

exception exists if the claims are already term limited, as would be the case for an

application subject to a terminal disclaimer or a reissue application (see

pre-AIA

35 U.S.C. 154(b)(1)(C)

(referring to issuance of the original

patent)).

If an application contains both interfering and non-interfering

claims, a restriction requirement should be made between the two. If the applicant

traverses the restriction requirement, depending on the reasons for the traversal,

the restriction may be maintained or the traversal may be treated as a concession

that the non-interfering claims should be designated as corresponding to the

count.

B.

Unpatentable Claims

Ordinarily restriction of claims simply because they are not

patentable would not be appropriate. If, however, (A) prosecution of the unpatentable

claims to completion would unduly delay initiation of the interference and (B) the

delay would create prejudice to another stakeholder, such as another applicant or the

public, a restriction requirement may be appropriate. Approval of an IPS is required

before this restriction requirement may be made.

Example

An applicant has both broad and narrow claims. The narrow claims

are plainly supported, but the support for the broad claims is contested. A patent

with claims to the narrow invention issues to another inventor with a much later

earliest effective filing date. Delay of the interference until the patentability

of the broader claims is resolved may unduly prejudice the patentee and the public

by leaving a cloud of doubt hanging over the patent claims

arrow claims

are plainly supported, but the support for the broad claims is contested. A patent

with claims to the narrow invention issues to another inventor with a much later

earliest effective filing date. Delay of the interference until the patentability

of the broader claims is resolved may unduly prejudice the patentee and the public

by leaving a cloud of doubt hanging over the patent claims.

If the unpatentable application claims are eventually prosecuted

to allowance, the examiner should consult with the IPS regarding the status of the

interference in case the claims would be affected by the outcome of the

interference.

C.

Reissue Applications

As explained above, reissue applications are not subject to patent

term adjustments. Applicants sometimes, however, file reissue applications to amend

patent claims in response to events occurring in the interference. To maintain parity

with other applicants, the Board does not permit reissue applicants to add claims

that would not correspond to a count. See

Winter v. Fujita,

53 USPQ2d 1234, 1249 (Bd. Pat. App. & Inter. 1999). Since the burden lies with

the reissue applicant to comply with

Winter,

the examiner need not

require restriction of the non-interfering claims. Practice under

Winter,

however, may explain why some reissue applicants file

more than one reissue application for the same patent.

Form paragraph

23.01

may be used to acknowledge a

request for interference that is premature since examination of the application has

not been completed.