715.03(a)(i) Request for Reconsideration Resolves All Outstanding Issues and No Notice of Appeal Has Been Filed

If the request for reconsideration convinces the examining attorney that a refusal or requirement should be withdrawn, and no other issues remain, the examining attorney may approve the application for publication or registration.

715.03(a)(ii) Request for Reconsideration Does Not Resolve All Outstanding Issues and No Notice of Appeal Has Been Filed

715.03(a)(ii)(A) Prior Amendment Withdrawn

If, in a request for reconsideration that does not overcome or resolve all outstanding issues, the applicant also withdraws a prior amendment submitted in response to a refusal or requirement made by the examining attorney in an Office action (e.g., an amendment to the Supplemental Register or disclaimer), this does not raise a new issue.

715.03(a)(ii)(B) Outstanding Refusals and/or Requirements Must Be Continued, Time Remains in Response Period for Applicant to Appeal, and No Notice of Appeal Has Been Filed

The examining attorney must issue a "Request for Reconsideration Denied – No Appeal Filed – Time Remaining" (or, if appropriate, "SU – Request for Reconsideration Denied – No Appeal Filed – Time Remaining") action if: (1) the request for reconsideration does not overcome or resolve all outstanding refusal(s) and/or requirement(s); (2) the applicant’s response does not meet the criteria under 37 C.F.R. §2.65(a)(2) for granting additional time to complete the response, because such issues cannot be resolved with additional time granted; and (3) no notice of appeal has been filed. This action must (1) acknowledge receipt of the request for reconsideration, (2) indicate that the request is denied and explain why it does not overcome or resolve the final refusal(s) and/or requirements, (3) identify the final refusal(s) and/or requirements that are maintained and continued and any that are satisfied or withdrawn, (4) advise the applicant that the time for appeal runs from the issuance date of the final Office action, (5) advise that the applicant has the remainder of the response period to comply with any outstanding refusal(s) and/or requirement(s) and/or to file a notice of appeal to the Board, and (6) omit the six-month response clause. See TMEP §705.08.

Once the examining attorney has issued a "Request for Reconsideration Denied – No Appeal Filed – Time Remaining" (or "SU – Request for Reconsideration Denied – No Appeal Filed – Time Remaining") action, the examining attorney must abandon the application for incomplete response, using the "Abandoned Due to Incomplete Response" action, if the applicant (1) does not submit within the time remaining a complete response or a request for reconsideration that presents a new issue or new evidence significantly different from that previously provided or (2) fails to respond. The application should be abandoned due to incomplete response, and not for failure to respond, because the applicant did in fact respond to the final Office action by filing a request for reconsideration.

See TMEP §718.02(a) for information about processing an incomplete response to a partial final refusal or requirement.

715.03(a)(ii)(C) Outstanding Refusals and/or Requirements May Be Resolved if Applicant Is Given 30 Days or Time Remaining in Response Period to Comply with Issues

The preferred action is to issue an "Examiner’s Action Continuing a Final Refusal – 30 day Letter" (or, if appropriate, "SU – Examiner’s Action Continuing a Final Refusal – 30 day Letter") if: (1) the request for reconsideration does not overcome or resolve all outstanding refusal(s) and/or requirement(s); (2) the applicant’s response complies with the criteria in 37 C.F.R. §2.65(a)(2) for granting additional time to complete the response, regardless of whether time remains in the response period, because such issues can be resolved with additional time, including where the record indicates that the applicant can place the application in condition for approval for publication or registration by completing the response or all issues can be resolved by examiner’s amendment; and (3) no notice of appeal has been filed. See In re P.T. Polymindo Permata, 109 USPQ2d 1256, 1257 (Dir USPTO 2013). See TMEP § 715.03(a)(ii)(E) regarding responses to final actions that comply with the criteria in 37 C.F.R. §2.65(a)(2) (those signed by unauthorized persons, unsigned responses, and TEAS responses consisting solely of a signature or missing significant data or attachments).

This Office action must: (1) include an appropriate explanation of the problem with the response; (2) give the applicant 30 days, or to the end of the six-month response period set forth in the previous Office action, whichever is longer, to submit a complete response; and (3) omit the six-month response clause. See TMEP §§705.08, 718.03(b).

If the examining attorney determines that an examiner's amendment ( see TMEP §§707─707.03) will immediately put the application in condition for publication or registration, the examining attorney should attempt to contact the applicant to obtain authorization to issue an examiner's amendment to resolve the matters that remain outstanding.

Once the examining attorney has issued an "Examiner’s Action Continuing a Final Refusal – 30 day Letter" (or "SU – Examiner’s Action Continuing a Final Refusal – 30 day Letter") the examining attorney must abandon the application for incomplete response, using the "Abandoned Due to Incomplete Response" action, if the applicant (1) does not submit within the time remaining a complete response or a request for reconsideration that presents a new issue or new evidence significantly different from that previously provided or (2) fails to respond. The application should be abandoned for incomplete response and not for failure to respond, because the applicant did in fact respond to the final Office action by filing a request for reconsideration.

Granting additional time to complete a response under 37 C.F.R. §2.65(a)(2) does not stay or extend the deadline for filing an appeal to the Board (or petition to the Director under 37 C.F.R. §2.63(b)(2), if appropriate). See 15 U.S.C. §1062(b); 37 C.F.R. §2.142(a). See TMEP §718.02(a) for information about processing an incomplete response to a partial final refusal or requirement.

715.03(a)(ii)(D) Outstanding Refusals and/or Requirements Must Be Continued, Time for Appeal Has Expired, and No Notice of Appeal Has Been Filed – Abandon for Incomplete Response

If (1) the examining attorney is not persuaded by the request for reconsideration, (2) the applicant's response does not meet the criteria in 37 C.F.R. §2.65(a)(2) for granting additional time to complete the response, (3) there is no time remaining in the six-month response period, and (4) no notice of appeal has been filed, the examining attorney must hold the application abandoned due to incomplete response. The examining attorney must deny the request for reconsideration by issuing an "Abandoned Due to Incomplete Response" action. See TMEP §718.02(a) for information about processing an incomplete response to a partial final refusal or requirement.

If the examining attorney denies the request for reconsideration and holds the application abandoned for incomplete response, the applicant may file a petition to the Director under 37 C.F.R. §2.146 to reverse the examining attorney’s holding of abandonment. However, the Director will reverse the examining attorney’s action on petition only where there has been clear error or an abuse of discretion or, in rare cases, where a petitioner can show that it has substantially complied with the requirements of the statute or rules. In re P.T. Polymindo Permata, 109 USPQ2d 1256, 1257 (Dir. USPTO 2013); In re GTE Educ. Servs., 34 USPQ2d 1478, 1479–80 (Comm'r Pats. 1994); In re Legendary Inc., 26 USPQ2d 1478, 1479 (Comm’r Pats. 1992); TMEP §1713.01. The unintentional delay standard of 37 C.F.R. §2.66 does not apply in this situation. See TMEP §§1713.02, 1714.01(f)(ii)(A).

715.03(a)(ii)(E) Responses After Final Refusal Signed by Unauthorized Persons, Unsigned Responses, TEAS Responses Consisting Solely of a Signature, and TEAS Responses Missing Significant Data or Attachments

If an examining attorney receives a response to a final action signed by an unauthorized person, an unsigned response to a final action, a TEAS response to a final action that consists solely of a signature, or a TEAS response to a final action missing significant data or attachments, the examining attorney should not hold the application abandoned for failure to respond completely. The examining attorney must issue an "Examiner’s Action Continuing a Final Refusal – 30 day Letter" (or, if appropriate, "SU – Examiner’s Action Continuing a Final Refusal – 30 day Letter") that (1) includes an appropriate explanation of the problem with the response, (2) gives the applicant 30 days, or to the end of the six-month response period set forth in the previous Office action, whichever is longer, to submit a complete response, and (3) omits the six-month response clause. See TMEP § 705.08. Granting additional time to complete a response under 37 C.F.R. §2.65(a)(2) does not extend the deadline for filing an appeal to the Board (or petition to the Director under 37 C.F.R. §2.63(b)(2), if appropriate). See 15 U.S.C. §1062(b); 37 C.F.R. §2.142(a).

Once an examining attorney has issued an "Examiner’s Action Continuing a Final Refusal – 30 day Letter" (or "SU – Examiner’s Action Continuing a Final Refusal – 30 day Letter"), the examining attorney must abandon the application for incomplete response, using the "Abandoned Due to Incomplete Response" action, if the applicant (1) does not submit within the time remaining a complete response or a request for reconsideration that presents a new issue or new evidence significantly different from that previously provided or (2) fails to respond. The application should be abandoned for incomplete response and not for failure to respond, because the applicant did in fact respond to the final Office action by filing a request for reconsideration. See TMEP §718.03(a).