By Dennis Crouch
Pfizer v. Lee (Fed. Cir. 2016) [PfizerLee Opinion]
In this case, the Federal Circuit has refused Wyeth’s (now Pfizer’s) plea for more patent-term-adjustment (PTA).
The basic issue is involves the “A-Delay” category of patent term adjustment that provides for term adjustment when the PTO fails to issue its first office action within fourteen months from the application filing date.
Here, the patent examiner’s first qualifying action was a restriction requirement mailed in August 2005. However, after a discussion with Wyeth’s attorneys, in February 2006 the examiner withdrew the restriction requirement and issued a corrected version.
The question then is whether the original restriction requirement qualifies to cut-off the A-Delay even though it was later withdrawn as insufficient.
The term adjustment statute indicates that A-Delay will stop accruing once the USPTO “provide[s] at least one of the notifications under Section 132.” Section 132(a) in turn provides:
Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application.
In prior cases, the court has offered some guidance as to when Section 132 is met. In particular, the court has held that the notice does not have to present a winning argument or overwhelming factual evidence. Rather, the rule is simply that the notice must be sufficient to permit the applicant to recognize the grounds for rejection/objection. In Chester v. Miller, the Federal Circuit wrote that Section 132 simply requires that the applicant “at least be informed of the broad statutory basis for [the rejection of] his claims, so that he may determine what the issues are on which he can or should produce evidence.”
Coming back to the facts of this case: The failure of the original restriction requirement divided the 100+ claims into twenty one distinct groups, but the restriction requirement failed to expressly categorize of the six dependent. On appeal, the Federal Circuit found, despite the examiner’s error, that the mailing was still sufficient to meet the notice requirement.
Here, the examiner’s detailed descriptions of the 21 distinct invention groups outlined in the examiner’s initial restriction requirement were clear, providing sufficient information to which the applicants could have responded. Indeed, the applicants never challenged the content of the invention groups defined by the examiner. And, significantly, the examiner’s defined invention groups remained identical between the two restriction requirements. Viewed as a whole, the restriction requirement provided adequate grounds on which the applicants could “recogniz[e] and seek to counter the grounds for rejection.” Chester. Therefore, because the examiner clearly defined to the applicants the invention groups available for election and further prosecution, the applicants were placed on sufficient notice of the reasons for the examiner’s restriction requirement.
As for the six claims whose classifications were omitted from the initial restriction requirement, Wyeth could have taken direction for their classification from the fact that their respective independent claims were each included in the initial restriction requirement. Here, the dependent claims would naturally have been classified in a subset of the invention groups to which the claims they depend from belong.
The PTO’s position is somewhat strengthened by its own MPEP statements that a restriction requirement which fails to classify all of the claims still counts as providing a section 132 notice.
The majority opinion was written by Judge O’Malley and joined by Judge Dyk. Judge Newman wrote in dissent — arguing that this was a case of clear error by the examiner and should not count as a proper notice. If Judge Newman is correct, Wyeth would been within its rights to simply sit on its hands not respond until the USPTO issued its notice of abandonment.
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Coming out of this case (and others), we know that even a very low quality mailing from a patent examiner will be counted sufficient notice and thus force a response on threat of abandonment. Where a procedural error exists, the best practice action then is to quickly contact the examiner and identify the error. Here, Wyeth waited until four days before the deadline to respond.
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 The case involves U.S. Patent No. 8,153,768 that issued from U.S. Patent Application No. 10/428,894.
 35 U.S.C. § 154(b).
 Chester v. Miller, 906 F.2d 1574 (Fed. Cir. 1990).
 In a footnote, the Federal Circuit suggests that failure to classify and independent claim could possibly fail the notice requirement of Section 132.