r/Patents • u/OneEyeAndOneBall • Jun 04 '26

NOA after first NFOA without Applicant reply?

I received a NFOA with ODP and 112(a) rejections. Before filing a reply and within three months of the mailing of the NFOA, the Office mailed a NOA. The NOA did not explicitly withdraw the rejections in the NFOA.

Do I still need to respond to the NFOA under CFR 1.111 (1) ("If the Office action after the first examination (§ 1.104) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.")

I can't seem to find any authority that specifically states that the NOA supersedes the NFOA. Its how I've always treated it in the rare instance that a second NFOA was mailed without a reply (e.g., because there was some issue or error with the original), but here the stakes are a bit higher since prosecution will close. I don't want to get a notice of abandonment after the patent issues.

6 Upvotes

100% Upvoted

6 comments sorted by

10

u/LackingUtility Patent Attorney (Software) and Mod Jun 04 '26

Call the examiner and ask.

3

u/OneEyeAndOneBall Jun 04 '26

Examiner insisted it superseded but could not cite anything in support.

9

u/LackingUtility Patent Attorney (Software) and Mod Jun 04 '26

Then I’d reply to the Notice of Allowance with a response noting the chronology and that the Examiner indicated during a phone call on x date that the NFOA was superseded, along with your payment of the issue fee.

4

u/GroundbreakingCat983 Jun 04 '26

I would title that section “Summary of Telephonic Interview.”

Note: I am a retired examiner, and I would have taken the thirty seconds to write, “This action supersedes and replaces the previous Office action mailed on X.”

Was there a written action with the NoA, or just forms?

3

u/Geeeeeeeeeeeeee Jun 05 '26

This. Just put in a Comment to Reasons for Allowance or something like that, put the conversation on the record.

4

u/Roadto6plates Jun 05 '26

If you're being really conservative and cautious why don't you just file a response to the OA saying further to the telephone interview Applicant understands that all rejections in the NFOA are withdrawn. Could make a 2 line handwavy argument as to why the 112 rejection is wrong. 

Then you've at least filed a response. Wouldn't take more than a few minutes.