An example which compares a Request for Continued Examination with a Continuation

Request for Continued Examination (RCE) practice of the USPTO is summarized as follows:

A request for continued examination (RCE) is a request by an applicant for continued prosecution after the patent office has issued a "final" rejection or after prosecution "on the merits" has been closed (for example by a Notice of Allowance (NOA)). An RCE is not considered a continuing patent application - rather, prosecution of the pending application is reopened. Definition courtesy: Wikipedia.

Continuation practice of the USPTO is summarized as follows:

A "continuation application" is a patent application filed by an applicant who wants to pursue additional claims to an invention disclosed in an earlier application of the applicant (the "parent" application) that has not yet been issued or abandoned. The continuation uses the same specification as the pending parent application, claims the priority based on the filing date of the parent, and must name at least one of the inventors named in the parent application. This type of application is useful when a patent examiner allowed some, but rejected other claims in an application, or where an applicant may not have exhausted all useful ways of claiming different embodiments of the invention. Definition courtesy: Wikipedia.

An example:

A patent application claimed feature ‘X’ in the independent claims when filed in the USPTO. The dependent claims contained features ‘X1’, ‘X2’, ‘X3’ & ‘X4’. The feature ‘X’ relates to a desktop computer which is configured like a network communications device. The desktop includes a keyboard and a mouse, wherein both the keyboard and the mouse are capable of both wireless & wired communication with the desktop. The independent claims recite a feature, “the wireless configuration corresponds to the wired configuration when the desktop device is active, such that a desktop user has an option to switch between a wireless mode and a wired mode for efficient desktop usage by both the keyboard and the mouse.” The applicant claimed these features, particularly in the independent claims, because of lack of sufficient time. In the first office action, the examiner rejected the patent application under 35 U.S.C. § 112, 35 U.S.C. § 101 & 35 U.S.C. § 103. The applicant hurriedly responded to the office action by amending the independent claims to include the feature, “the wireless mode complements the wired mode for both the mouse and the keyboard”; this feature was borrowed from the specification because this feature wasn’t there in the dependent claims. Nevertheless, the applicant did not delete any ‘original’ features from the independent claims. The applicant failed to claim clear features which could address the problems of the prior art. The Examiner was not happy with this amendment and the Examiner construed the original feature of “switching between the wireless mode and the wired mode for efficient desktop usage” to be equally broad as the feature, “the wireless mode complements the wired mode.” The Examiner rejected the independent claims again by way of a final office action. However, the Examiner allowed few dependent claims which could not add value to the ‘crux’ of the invention according to the applicant’s perspective. The applicant could have filed an RCE while remaining in the scope of allowed dependent claims, by way of amendment, but the applicant would lose the features rejected by Examiner.

The applicant realised that the combination of aforementioned features (‘switching’ & ‘complementing’) was the ‘crux’ of the invention. The applicant would not have lost an opportunity of getting a great patent if the patent application draft had been well written following a careful thought process. The best option available with the applicant was to file a ‘Continuation’ application including a different yet meaningful embodiment of the invention in the independent claims. The new independent claims had the features, “wherein the wireless configuration complements the wired configuration by way of allowing a desktop user to, at least one of: select; and switch between the wireless and wired configuration when the desktop is about to acquire, in either wireless configuration or wired configuration, at least one of: a hanging state; a buffer state; a crash state, wherein the desktop is still busy processing data based on a network communication configuration of the desktop, and wherein the network communication configuration of the desktop comprises communication of the desktop with one or more network communication devices excluding both the keyboard and the mouse.” The independent claims of the ‘Continuation’ substantially borrowed features from the detailed description to claim a unique embodiment. The ‘Continuation’ application was allowed by the USPTO.

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