第23回 アドバイザリー・アクション(advisory action)(2)

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37CFR 1.113

(b)In making such final rejection, the examiner shall repeat or state all grounds of rejection then considered applicable to the claims in the application, clearly stating the reasons in support thereof.


(c)Reply to a final rejection or action must include cancellation of, or appeal from the rejection of, each rejected claim.



See 37 CFR 41.33 and MPEP § 1206 for information on affidavit or other evidence filed after appeal. Failure to properly reply under 37 CFR 1.113 to the final rejection results in abandonment. A reply under 37 CFR 1.113 is limited to:
(A)an amendment complying with 37 CFR 1.116;
(B)a Notice of Appeal(and appeal fee); or
(C)a request for continued examination(RCE)filed under 37 CFR 1.114 with a submission(i.e., an amendment that meets the reply requirement of 37 CFR 1.111)and the fee set forth in 37 CFR 1.17(e). RCE practice under 37 CFR 1.114 does not apply to utility or plant patent applications filed before June 8, 1995 and design applications.





a)If prosecution in an application is closed, an applicant may request continued examination of the application by filing a submission and the fee set forth in § 1.17(e)prior to the earliest of:
(1)Payment of the issue fee, unless a petition under § 1.313 is granted;
(2)Abandonment of the application; or
(3)The filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. 141, or the commencement of a civil action under 35 U.S.C. 145 or 146, unless the appeal or civil action is terminated.
(b)Prosecution in an application is closed as used in this section means that the application is under appeal, or that the last Office action is a final action(§ 1.113), a notice of allowance(§ 1.311), or an action that otherwise closes prosecution in the application.
(c)A submission as used in this section includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. If reply to an Office action under 35 U.S.C. 132 is outstanding, the submission must meet the reply requirements of § 1.111.
(d)If an applicant timely files a submission and fee set forth in § 1.17(e), the Office will withdraw the finality of any Office action and the submission will be entered and considered. If an applicant files a request for continued examination under this section after appeal, but prior to a decision on the appeal, it will be treated as a request to withdraw the appeal and to reopen prosecution of the application before the examiner. An appeal brief(§ 41.37 of this title)or a reply brief(§ 41.41 of this title), or related papers, will not be considered a submission under this section.




Further examination of the application may be obtained by filing a continued prosecution application(CPA)under 37 CFR 1.53(d), if the application is a design application.




An amendment filed at any time after final rejection, but before an appeal brief is filed, may be entered upon or after filing of an appeal brief provided the total effect of the amendment is to(A)remove issues for appeal, and/or(B)adopt examiner suggestions.


In the event that a proposed amendment does not place the case in better form for appeal, nor in condition for allowance, applicant should be promptly informed of this fact, whenever possible, within the statutory period.


The refusal to enter the proposed amendment should not be arbitrary.


The proposed amendment should be given sufficient consideration to determine whether the claims are in condition for allowance and/or whether the issues on appeal are simplified.


Ordinarily, the specific deficiencies of the amendment need not be discussed. However, if the proposed amendment raises the issue of new matter, the examiner should identify the subject matter that would constitute new matter.

f the proposed amendment presents new issues requiring further consideration and/or search, the examiner should provide an explanation as to the reasons why the proposed amendment raises new issues that would require further consideration and/or search.



  • 最終拒絶またはアクションに対する応答は、拒絶されたクレームの各々の取消、または拒絶に対する審判請求を含む必要がある。
  • 最終拒絶に対する応答は、補正、審判請求、継続審査請求(RCE)がある。RCEとは審査を継続してもらうための請求である。
  • 継続審査請求は、
    1. 特許発行料金の支払い
    2. 出願の放棄
    3. 特許審判抵触部による審決


  • 継続審査請求がされると、審査官はオフィスアクションが確定しないように、提出物(補正など)の審査を開始する。
  • 審判請求がされ、審決前に継続審査請求がされると、審判請求の取下とみなされる。このとき審判請求書や答弁書はRCEの提出物とはみなされない。


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