[00:00:00] Speaker 02: That's correct, sir. [00:00:03] Speaker 02: OK. [00:00:04] Speaker 02: Your Honor, we submitted a couple of days ago a notice of supplemental authority for Sopronos Pharmaceuticals versus Yanchu, a recently decided case of this court. [00:00:21] Speaker 02: And we believe that the rationale of that case governs the rationale. [00:00:29] Speaker 02: by which the court should apply to this case. [00:00:32] Speaker 02: In Soprano's pharmaceuticals, this court found that the PTO cannot reduce PTA for the period in excess of the time during which the applicant failed to engage in reasonable efforts to conclude prosecution. [00:00:50] Speaker 02: And to do so exceeds the clear and express [00:00:52] Speaker 02: statutory limits for PTA reduction. [00:00:55] Speaker 00: Would you agree that once a final office action issues from the agency, that that cuts off any further prosecution as a matter of right? [00:01:04] Speaker 00: That prosecution is now closed? [00:01:08] Speaker 02: Your Honor, prosecution is, is closed, but that's not to say that additional responses aren't allowed under, under Rule 116, for example. [00:01:20] Speaker 02: amendments and arguments are permitted. [00:01:23] Speaker 00: Those responses under 116, they don't relieve you of the responsibility of filing a reply to the final office action to avoid abandonment of the case, is that right? [00:01:36] Speaker 02: Well, we did file a reply to the final office action. [00:01:40] Speaker 00: No, no, I'm just asking you an understanding of 1.116, that there's a statement in that rule that says [00:01:48] Speaker 00: If you choose to file a 1.116 response, that's fine. [00:01:53] Speaker 00: You can do that. [00:01:54] Speaker 00: But it doesn't relieve you of your responsibility to timely file a reply to the final office action. [00:02:00] Speaker 00: And if all you do is a 1.116 submission and don't do anything else and don't hear anything else, your case will actually ultimately go abandoned for failing to file a 1.113 reply. [00:02:13] Speaker 00: Is that fair to you? [00:02:15] Speaker 02: That's absolutely correct, Your Honor. [00:02:17] Speaker 00: So 1.116 is more of an elective parallel track thing that you can try to do in a mother may I sense to persuade the examiner to allow your case, but it's not as a matter of right that you get an opportunity to be heard where the PTO must consider any and all arguments and evidence that you submit. [00:02:41] Speaker 00: Is that fair to say? [00:02:44] Speaker 02: I would not say that, Your Honor. [00:02:47] Speaker 00: Where did what I said, where did I go wrong? [00:02:52] Speaker 02: Because it's not just a mother-may I situation. [00:02:56] Speaker 02: 116 exists to provide an end to prosecution. [00:02:59] Speaker 02: You have to file an appeal, a notice of appeal, or be allowed, or file an RCE. [00:03:06] Speaker 02: But the PGO has made clear in 116 and also in the various post, after final programs, [00:03:14] Speaker 02: that the PTO has implemented, that the PTO authorizes and indeed encourages after final practice. [00:03:21] Speaker 02: After final practice is a feature of probably a majority of cases before the PTO. [00:03:28] Speaker 02: And the court's decision in this case will affect tens of thousands of cases. [00:03:32] Speaker 00: But in many ways, isn't that after final practice sort of a version of RCE practice? [00:03:39] Speaker 00: And once you file an RCE, it cuts off B delay. [00:03:42] Speaker 00: Is that right? [00:03:44] Speaker 02: Yes, Your Honor, but filing an RC in this case would have defeated, would have been contrary to goals of compact prosecution, and it would have delayed final resolution of the case. [00:03:56] Speaker 02: And the question here, Your Honor, is not whether this is before final or after final. [00:04:02] Speaker 02: The question and the question in supernus is whether the applicant's conduct was reasonably targeted towards achieving resolution of the case. [00:04:12] Speaker 02: And we submit that it was. [00:04:14] Speaker 00: Your initial response, your July response. [00:04:18] Speaker 00: Yes, sir. [00:04:20] Speaker 00: That response, as I understand it, you wanted to persist in having a back and forth with the examiner over the merits of the examiner's 103 rejection. [00:04:29] Speaker 00: Is that fair to say? [00:04:31] Speaker 02: With regard to 103, we maintained our position. [00:04:35] Speaker 00: And then finally, in your August submission, you finally gave up. [00:04:39] Speaker 00: You said, okay, I give up. [00:04:41] Speaker 00: I'm going to cancel all the claims that are subject to the 103 rejection. [00:04:44] Speaker 00: I'm going to cancel all those claims and I'm going to follow your direction and suggestions on how to fix all the technical problems with the other claims. [00:04:53] Speaker 00: And so now everything I've done is according to your wishes so that the case is in condition for allowance. [00:05:01] Speaker 00: Is that fair to say? [00:05:02] Speaker 02: Yes, Your Honor. [00:05:03] Speaker 02: And if I could further say there was a telephone conversation on the day of the second response and had the examiner simply [00:05:11] Speaker 02: you know, entered the amendments that were provided in the second response by examiner's amendment, then there would not have been a further paper by the applicant who wouldn't have been charged with this delay. [00:05:24] Speaker 00: And the... Well, you guess you would have, because the first response, which goes back to July, for whatever reason, you chose to continue to fight the merits of the 103 rejection. [00:05:35] Speaker 00: At that point in time, in July, I think it's 2013, [00:05:38] Speaker 00: You could have easily said, all right, I have a final rejection on my hands here, and I want to just get this thing issued. [00:05:46] Speaker 00: So I'm going to do every single thing that's going to make this examiner happy, according to what the examiner said in the final rejection, so that I can put this case in condition for allowance. [00:05:56] Speaker 00: And then by doing that, I will have clearly made every reasonable effort to conclude prosecution. [00:06:02] Speaker 00: But instead, you wanted to keep fighting the 103. [00:06:07] Speaker 00: to get the examiner's attention, to have another opportunity to be heard after final, after prosecution has been closed, to argue the merits of the 103. [00:06:16] Speaker 00: And the examiner said, no, because prosecution has been closed. [00:06:20] Speaker 00: You need to do something to get rid of the rejection other than argument. [00:06:24] Speaker 00: You have to either cancel the claims or do something else. [00:06:28] Speaker 00: And you didn't do that. [00:06:28] Speaker 00: And that's what the point of the advisory action was. [00:06:31] Speaker 02: Your Honor, we did make some arguments. [00:06:33] Speaker 02: And some arguments were accepted. [00:06:35] Speaker 02: With respect to the 103? [00:06:40] Speaker 02: We went from having 15 claims rejected and 7 allowable to after the advisory action 17 claims allowable. [00:06:50] Speaker 00: I'll agree with you that you in part gave in and made concessions to the examiner to help align your case with the examiner's point of view. [00:07:01] Speaker 00: But you didn't do it all the way. [00:07:03] Speaker 00: With the 103 rejection, you wanted to keep fighting. [00:07:07] Speaker 00: That would have been why you do an RCE. [00:07:10] Speaker 00: You want to keep arguing the merits of a rejection. [00:07:13] Speaker 00: That's what you do with an RCE. [00:07:14] Speaker 00: Instead, you didn't file an RCE. [00:07:16] Speaker 00: You did this after final response. [00:07:20] Speaker 00: And that, in essence, was a choice by you to not conclude the prosecution right away in light of the context of the final rejection. [00:07:28] Speaker 00: That was you trying to keep going, pressing forward, [00:07:33] Speaker 00: hang on to a given take with the examiner, which you don't have any right to do after prosecution has formally been closed by the final rejection. [00:07:45] Speaker 02: Your Honor, I would say there is, as I said, after final prosecution is allowed, it doesn't obviate. [00:07:56] Speaker 00: It's highly regulated, though, right? [00:07:58] Speaker 00: What? [00:07:58] Speaker 00: It's highly regulated. [00:08:00] Speaker 00: It's tightly scripted. [00:08:02] Speaker 00: There are just a few little things you can do in the context of after final as opposed to after a non-final office action. [00:08:09] Speaker 00: Is that fair to say? [00:08:11] Speaker 02: I would say you can do anything after final that you can do before non-final. [00:08:16] Speaker 02: The question is whether you have as a matter of right that the examiner will consider it. [00:08:24] Speaker 02: I would say the examiner has more leeway with regard to [00:08:29] Speaker 02: not entering amendments or not considering arguments after final, but it doesn't mean the arguments can't be presented. [00:08:37] Speaker 02: The only thing that's different about after final practice is that come what may, the six months from final rejection, you know, statutory bar doesn't end and you have to by that time file either a notice of appeal or an RCE or get the case, get a notice of allowance. [00:08:58] Speaker 02: That's true. [00:08:59] Speaker 02: You have to do that within six months. [00:09:02] Speaker 02: But with regard to the arguments that you can make, you're permitted to make arguments. [00:09:07] Speaker 02: You're encouraged to make arguments. [00:09:09] Speaker 00: But you don't get as a matter of right to be heard on those arguments by the examiner. [00:09:13] Speaker 00: The examiner can choose to consider them or not consider them. [00:09:17] Speaker 02: That's not the PTO's policy. [00:09:18] Speaker 02: The PTO's policy is to encourage after-final practice. [00:09:22] Speaker 02: That's why we have all these after-final programs, PABRs, and so forth. [00:09:27] Speaker 00: That may be true, but maybe what that means is what they've tried to do for you is to create sort of like a mini RCE without having to pay for an RCE. [00:09:38] Speaker 00: But that doesn't necessarily mean you get relief under the patent term adjustment laws, that now you get to escape the costs under PTA for filing an RCE when you're doing something in substance that very much looks like an RCE. [00:09:53] Speaker 02: Well, Your Honor, if we had, let's say, filed [00:09:57] Speaker 02: You know, instead of the first response, we simply filed an RCE. [00:10:02] Speaker 02: There is virtually no chance the case would have been resolved as it was within 21 days. [00:10:08] Speaker 02: And it would have simply extended prosecution. [00:10:14] Speaker 02: And it may or may not have resulted in a shorter or longer pattern term adjustment. [00:10:22] Speaker 00: What you filed in August, you could have filed it in July. [00:10:24] Speaker 00: Is that fair to say? [00:10:28] Speaker 00: Canceling all the claims subject to a 103. [00:10:33] Speaker 02: Your Honor, you could say about any response that doesn't result in allowance, you could have done something sooner. [00:10:43] Speaker 02: The fact is that the examiner's position also changed somewhat from the final rejection [00:10:50] Speaker 02: to the advisory action. [00:10:54] Speaker 02: That's why we went from having 15 claims rejected to 17 claims allowed. [00:10:58] Speaker 00: On the 103 rejection, you're saying the examiner moved its position between the advisory action and the final office action? [00:11:04] Speaker 02: The examiner withdrew his objections on the basis of 112. [00:11:08] Speaker 02: I'm talking about the 103. [00:11:09] Speaker 00: Let me repeat my 103 question to you. [00:11:13] Speaker 00: Did the examiner alter its point of view as to the 103 between the advisory action it issued [00:11:20] Speaker 00: and the final office action issue. [00:11:22] Speaker 02: No, the examiner... Okay, then. [00:11:24] Speaker 00: Now we're in the same place. [00:11:25] Speaker 02: So, no, we're in the place that the examiner accepted some arguments and rejected others, which is a common, typical situation. [00:11:35] Speaker 00: You're into your rebuttal, but could you just tell me what is your definition of what the word reply means in Rule 704B? [00:11:42] Speaker 02: In Rule 704B, the word reply means simply a reply, a response. [00:11:48] Speaker 02: It's not [00:11:49] Speaker 00: It could be a one-sentence reply, and that would count as an adequate reply under the rule? [00:11:55] Speaker 02: It would have to be a reply that addressed the issues raised by the examiner. [00:12:00] Speaker 02: It would have to be a reply that was consistent with Rule 116, consistent with responses to office actions under 35 U.S.C. [00:12:13] Speaker 02: 111 and other applicable [00:12:16] Speaker 02: rules. [00:12:17] Speaker 02: But it does not have to result in allowance. [00:12:21] Speaker 02: The importation of the section 113C is not something that appears in the rule in 705. [00:12:41] Speaker 02: And if the PTO wanted to say that, it could. [00:12:42] Speaker 00: Is it your view that any reply that complies with one point [00:12:46] Speaker 00: 111 regardless of whether it's a response to a final office action or a non-final office action that should be adequate to fulfill the requirements of a reply under 704B? [00:12:58] Speaker 02: Yes, Your Honor. [00:12:59] Speaker 02: I would say an advisory action should have been construed as a notice and a reply should have been construed in accordance with its ordinary meaning. [00:13:08] Speaker 02: And the importation of special meanings for after final practice is not consistent. [00:13:13] Speaker 00: I know, but I'm trying to get a feel for what is it [00:13:16] Speaker 00: is your understanding of reply. [00:13:18] Speaker 00: And I can't tell if it's any reply or a 1.111 reply or something else. [00:13:26] Speaker 02: So it has to be a bona fide reply that in a bona fide effort under we're talking here about about what is what is reasonable in terms of trying to get allowance reasonable efforts to conclude prosecution. [00:13:41] Speaker 02: So it has to be a reply which constitutes a reasonable effort to include prosecution. [00:13:46] Speaker 02: Not necessarily a reply which does, in fact, conclude prosecution. [00:13:51] Speaker 02: That would be my submission. [00:13:52] Speaker 00: OK. [00:13:53] Speaker 02: I'll reserve the time for reply. [00:14:09] Speaker 01: Good morning, Your Honors, and may it please the court. [00:14:11] Speaker 01: Assistant United States Attorney Andrew Hahn here on behalf of the Patent and Trademark Office. [00:14:17] Speaker 01: As this court recognized just a few years ago in Gilead Sciences versus Lee, Congress expressly delegated authority to the PTO to prescribe regulations that would establish the circumstances that constitute a failure of an applicant to engage in reasonable efforts. [00:14:34] Speaker 01: I wondered if Chevron was going to be mentioned. [00:14:37] Speaker 01: to conclude processing of... He's a government lawyer. [00:14:39] Speaker 01: Yes. [00:14:40] Speaker 01: And as... Are you going to talk about our two? [00:14:46] Speaker 01: Well, I can... No, don't. [00:14:48] Speaker 01: It's okay. [00:14:50] Speaker 01: I can, but this court does not need to rely on our deference to affirm the district court's decision below. [00:14:56] Speaker 01: And that's because the regulations in 1.704 set forth illustrative examples of what constitutes a failure to engage in reasonable efforts. [00:15:07] Speaker 01: And among other things, 1.704 provides that applicant delay will be assessed when an applicant submits a noncompliant reply in response to an office action. [00:15:17] Speaker 01: The definition that... Wait a second. [00:15:19] Speaker 00: Are you talking about 704C7? [00:15:21] Speaker 01: I'm talking about section 704B. [00:15:24] Speaker 01: Okay. [00:15:27] Speaker 00: Well, it doesn't say noncompliant reply. [00:15:29] Speaker 00: It just says reply. [00:15:31] Speaker 00: That's right. [00:15:32] Speaker 00: That's right, Your Honor. [00:15:33] Speaker 00: It needs to file a reply within a certain period of time. [00:15:37] Speaker 00: in response to any action. [00:15:39] Speaker 00: So now the question is, what is Reply meant? [00:15:41] Speaker 01: Well, the word Reply is defined in at least three other regulations, 1.111, 1.113, and 1.703, all of which are expressly cross-referenced by 1.704. [00:15:54] Speaker 00: And it makes perfect sense. [00:15:57] Speaker 00: Well, 704B makes a reference to 1.111 and 1.113C. [00:16:03] Speaker 01: It does not, Your Honor, but it does. [00:16:05] Speaker 00: So then it's not cross-referenced in Rule 704? [00:16:08] Speaker 01: Well, 704 cross-references to 703, and 703, in turn, cross-references to 111 and 113. [00:16:17] Speaker 00: There is a peculiarity when it comes to 703, which is about trying to calculate examination delay, and then Rule 704, which is to calculate applicant delay, that 703 chooses to [00:16:31] Speaker 00: be very specific about what it means by replies and there are different kinds of replies and then this is what you have to do in different contexts for different replies. [00:16:40] Speaker 00: And yet there isn't anything like that in 704B. [00:16:43] Speaker 00: And so there's a possibility of an inference there that when it comes to 704B and calculating applicant delay, the BTO is agnostic and doesn't care about replies in the context of whether it's a non-final or a final office action. [00:16:59] Speaker 00: So what am I supposed to do with that? [00:17:02] Speaker 01: Well, I think I would disagree with your honor's suggestion that the PTO doesn't care about expanding upon the definition of reply in 704 for a couple different reasons. [00:17:12] Speaker 01: I think, first, by having 174 cross-reference to 703, there is an economy of not having to repeat the exact same cross-references and definitions from other regulations and having to import them into [00:17:28] Speaker 01: other regulations that might want to rely on those same definitions. [00:17:31] Speaker 00: Otherwise, all of our... Do you see that cross-reference to 703 and 704 as being something of a suggestion where the PTO is trying to borrow from all the language and discussion and vocabulary in 703 and insert that into 704? [00:17:45] Speaker 00: That's not how I read the cross-reference. [00:17:47] Speaker 01: Well, I think that there's at least a fair inference, however, that the terms of reply as it's being used in 704, 703, 111, and 113 should at the very least be read in perimeteria. [00:17:57] Speaker 01: And to get to Your Honor's question to the appellant in this case as to what other definition of reply there might be, the appellant notably has been unable to point to any other regulation or statute or case law that defines reply in any other way. [00:18:14] Speaker 01: And in fact, the appellant's counsel just now admitted that a reply would have to, at the very least, comply with [00:18:24] Speaker 01: 111 and 116, but noticeably leaves out 113. [00:18:28] Speaker 01: But 113 is exactly the regulation that describes what a reply must do when it's submitted in response to a final office action. [00:18:34] Speaker 00: Let me see if I understand the government's view. [00:18:38] Speaker 00: Let's have a hypothetical here. [00:18:39] Speaker 00: There's a final office action. [00:18:40] Speaker 00: And then four months after the final office action, the applicant files an appeal, notice of appeal. [00:18:52] Speaker 00: then the PTO would say there's been one month of applicant delay there. [00:18:56] Speaker 00: Is that right? [00:19:01] Speaker 01: Yes, Your Honor. [00:19:02] Speaker 01: I believe that there would be applicant delay for that one. [00:19:04] Speaker 00: And that's because the reply to the final office action was this notice of appeal, which under 1.113 is sufficient to be a compliant reply. [00:19:15] Speaker 01: Yes, Your Honor. [00:19:15] Speaker 01: I think that that's correct. [00:19:17] Speaker 00: So what if instead it was an RCE filing? [00:19:23] Speaker 01: An RCE filing that was filed four months after the fact? [00:19:26] Speaker 00: Yeah, after the final office action. [00:19:29] Speaker 00: Would that be a reply to the final office action? [00:19:33] Speaker 00: Does that term reply is used in 704B? [00:19:37] Speaker 01: I don't believe so, Your Honor, because I don't think that, well, excuse me. [00:19:42] Speaker 00: So then the clock would keep ticking on applicant delay beyond 30 days? [00:19:53] Speaker 01: I think that, well, I don't think that that's exactly right, Your Honor. [00:20:00] Speaker 01: I think that there would be the applicant delay for that period after the three-month mark to the beginning of the RCE. [00:20:06] Speaker 01: But I think that we would essentially, by filing the RCE, the finality of the prior final office action is set aside, and then we go into a second phase of the continued examination. [00:20:19] Speaker 01: And so we are [00:20:20] Speaker 01: So the continued back and forth between the examiner and the applicant, then we'll look to different obligations for the applicant in responding to various office actions. [00:20:30] Speaker 01: And we don't have the same concerns here. [00:20:31] Speaker 00: How do I understand, then, the rule of 704B, which says we're going to calculate applicant delay from three months after the final office action to the date where the applicant files reply to any action? [00:20:47] Speaker 00: and you're telling me an RCE filing is not our quote unquote reply, so then there's nothing that's triggering the cutoff of applicant delay. [00:21:01] Speaker 00: Do you see my question? [00:21:04] Speaker 00: I see your question, Your Honor, and I think that... My understanding is you want us to say that a reply [00:21:16] Speaker 00: to a final office action, as the term applies using 704B, is a notice of appeal or cancellation of any of the claims that you don't actually, that are rejected, that you choose not to appeal. [00:21:29] Speaker 00: That's right. [00:21:29] Speaker 00: That's 1.113C. [00:21:31] Speaker 01: That's right, Your Honor. [00:21:32] Speaker 00: But then there's other things, like an RCE, for example. [00:21:35] Speaker 00: And so I don't know what [00:21:39] Speaker 00: The rule is right now telling us about in 704B as to what do we do with calculating applicant delay for an RCE if an RCE technically isn't, quote unquote, replies that term is used in 704B. [00:21:56] Speaker 01: Well, I think under that scenario, because the filing of the RCE removes the finality of the prior final office action, [00:22:03] Speaker 01: then we do go into a different phase where the back and forth, where the finding of the RCE does cut off the assessment of the applicant delay for the first part, for the assessment with respect to the prior final office action. [00:22:20] Speaker 01: But then we are in a... Could it be that the RCE [00:22:34] Speaker 00: obviates any need to file a quote-unquote reply to a final office action because the finality has been withdrawn? [00:22:44] Speaker 00: It's like some kind of superseding event? [00:22:47] Speaker 01: Well, Your Honor, I think actually under the regulations in RCE would be considered a type of reply that would cut off the calculation of applicant delay. [00:22:59] Speaker 01: I think I'm maybe getting a little bit spun around here. [00:23:02] Speaker 00: It cuts off. [00:23:03] Speaker 00: You're pivoting. [00:23:05] Speaker 00: It cuts off accumulation of B delay. [00:23:07] Speaker 00: That's true. [00:23:08] Speaker 01: That's right, Your Honor. [00:23:10] Speaker 01: And it would also constitute a reply that would cut off the assessment of applicant delay as well. [00:23:17] Speaker 01: And so the... Because it's a reply? [00:23:22] Speaker 00: Is that term used in 704B? [00:23:27] Speaker 01: Yes, Your Honor. [00:23:27] Speaker 01: It would be. [00:23:29] Speaker 01: So that when the filing of the RCE occurs... [00:23:33] Speaker 00: A reply under 704B is not in response to a final office action. [00:23:38] Speaker 00: It isn't merely a 1.113C reply. [00:23:40] Speaker 00: It's also an RCB filing is a reply. [00:23:46] Speaker 01: Excuse me a moment, Your Honor. [00:24:05] Speaker 01: Yes, Your Honor, I think that 113 does actually refer to 114, which governs the filing of an RCE. [00:24:16] Speaker 01: And so by filing an RCE, it would actually comply with 113 and therefore be a compliant reply in response to a final office action, and therefore cut off the assessment of applicant delay. [00:24:31] Speaker 00: The reference to RCE in 113 isn't in 113C, though, right? [00:24:36] Speaker 01: It's in B. It's in A, Your Honor. [00:24:39] Speaker 01: And A. That's right, Your Honor. [00:24:47] Speaker 01: But I think that the inference that can be drawn from 113 as a whole is that the filing of an RCE would still cut off the calculation of applicant delay. [00:24:58] Speaker 01: But I also think that that is not what this Court has to decide in this case, because there's no question that the [00:25:05] Speaker 01: that intracellular's submission on July 17, 2013 was not a request for continued examination. [00:25:12] Speaker 01: There's no dispute over that. [00:25:13] Speaker 00: That's true, but this case may require us to try to explain what is a reply, what is an adequate reply, what is a compliant reply, what is the right conception of replies. [00:25:23] Speaker 00: That term is used in Sub-04B in the context of a final office action response. [00:25:29] Speaker 00: And so we've got to get to the bottom of this. [00:25:33] Speaker 00: takes me to the other question, which is why is it a 116 amendment after final that puts the case in condition for allowance, a so-called adequate reply under 704B, which you're telling me is supposed to be a 113C type of reply, but a 116 amendment that puts something in condition for allowance, that [00:26:02] Speaker 00: doesn't fit within the text of 113C. [00:26:06] Speaker 00: Am I missing something? [00:26:09] Speaker 00: Well, 113C just says, file a notice of appeal or you cancel claims. [00:26:14] Speaker 00: Those are two different things that you can do in combination with each other to comply with 113C. [00:26:19] Speaker 00: The agency has an additional thing that it wants to tell me is adequate to satisfy 113C. [00:26:28] Speaker 00: When you file a 116 amendment or submission that [00:26:31] Speaker 00: somehow puts the case in condition for allowance and triggers a notice of allowance. [00:26:37] Speaker 00: None of that is in 113C. [00:26:41] Speaker 00: So why is that deemed, in the PTO's view, to be a compliant apply, as the word reply is used in 704B when we're talking about the context of a final office action? [00:26:52] Speaker 01: Well, I think that 113C still requires that [00:26:59] Speaker 01: A reply to a final rejection or action must still comply with any requirements or objections as to form. [00:27:05] Speaker 01: And that when you take that in combination with the fact that there must be cancellation. [00:27:08] Speaker 00: Did you just read something from rule 113C? [00:27:11] Speaker 01: Yes, your honor. [00:27:12] Speaker 01: That's from 113C. [00:27:15] Speaker 01: That if any claim stands allowed, the reply to a final rejection or action must comply with any requirements or objections as to form. [00:27:22] Speaker 01: And that taken together as a whole still requires that [00:27:27] Speaker 01: that it's still consistent with those regulations that for a reply to a final office action must still put an application in condition for allowance in order for it to be a valid reply. [00:27:49] Speaker 00: So you're relying on the second sentence of 113C. [00:27:53] Speaker 00: You want me to translate that as [00:27:56] Speaker 00: encompassing a 116b amendment? [00:27:59] Speaker 01: Well, I think that what our position is is that taken as a whole that 113c necessarily requires that a reply to a final office action has to place an application in condition for allowance and that that is consistent with 113c and consistent with 116 and that it's not an arbitrary and capricious decision to [00:28:25] Speaker 01: require that that responses to a final office action meet that kind of requirement. [00:28:31] Speaker 01: Otherwise, there would be no logical end to completing a patent prosecution, and that we would be back in the pre-final office action scenario where there would continue to be this give and take between the applicant and the examiner. [00:28:49] Speaker 00: I guess it would help me if the regulations actually said all of this. [00:28:54] Speaker 00: Well, if you file a reply to a final office action that puts the case in condition for allowance and triggers a notice of allowance, then that constitutes a sufficient reply to a final office action, or perhaps obviates any need for a reply to a final office action. [00:29:12] Speaker 00: And so therefore, you're kind of off the hook at that point in terms of needing to file a reply. [00:29:18] Speaker 01: Your Honor, I see that my time is up if I may answer your question. [00:29:22] Speaker 01: Well, I think that while in an ideal scenario we would have regulations in every situation that would specifically address every single scenario that comes up, that's not the reality of how cases come before any sort of court in terms of trying to apply regulations in this case. [00:29:41] Speaker 01: But I think that what we have here are a set of regulations that, taken as a whole, are consistent with the PTO's position here, that being that a reply to a final office action must [00:29:52] Speaker 01: place an application and condition for allowance, and that the appellant has not been able to point to any other statute, regulation, or case that either defines reply that would be in such a way that supports their position, or to show that the PTO's position is somehow fundamentally inconsistent with the overall scheme that has been placed in the statute and the regulations. [00:30:18] Speaker 01: And for those reasons and the reasons set forth in our brief, Your Honor, we would ask that the district court's decision be affirmed. [00:30:33] Speaker 02: Your Honor, if I may, just a little time left. [00:30:36] Speaker 02: I'd like to say very quickly that I would submit that the scheme for after final practice set forth in 113 and 116 is just simply intended to ensure [00:30:47] Speaker 02: that they make very clear to applicants that nothing they do in after final practice obviates them, obviates the need to file a notice of appeal or get allowance or file an RCE within the statutory deadline. [00:31:03] Speaker 02: I would say specifically with respect to 705, as the court held, I again refer to the court's recent opinion in Soprano's. [00:31:16] Speaker 02: And I would say that the answer to the resolution of these issues, what is a reply, is in 35 U.S.C. [00:31:27] Speaker 02: 154, where it's simply, its reply is something which reasonably, is a reasonable effort to conclude prosecution of the application. [00:31:42] Speaker 02: And that if there's a reasonable effort to conclude prosecution of the application, if there's a de facto reasonable effort to conclude prosecution, it would be contrary to the statute to reduce that period for you. [00:31:57] Speaker 02: Thank you. [00:31:57] Speaker 00: The matter will stand.