CAFC Rejects Challenge to Examiner's Request for Information Under 37 CFR 1.105

Star Fruits S.N.C. v. U.S. Department of Commerce, 04-1160 (Fed. Cir. 2005)Star Fruits refused to respond to the Patent Examiner's request for information pursuant to 37 C.F.R. 1.105, because Star Fruits believed that the information would be used by the Examiner to issue what Star Fruit believed would be an improper rejection. As a result of this refusal the patent application was deemed abandoned, and the Federal Circuit affimed abandonment of the application. Under 37 C.F.R. 1.105, the Examiner can ask for, and the applicant must provide, any information that may be reasonably necessary to properly examine the application. This information is not limited to material information, so it made no difference whether or not the requested information could form the basis for a valid rejection. Star Fruit should have submitted the information, and appealed the improper rejection if and when it was made. The real issue in the case that was not decided is the Patent Office's 2001 decision that foreign sale or use of a plant subject to a foreign breeder's right registration bars a U.S. plant patent. Star Fruit tried to contest this policy by trying to prevent the rejection by challenging the request for information to support the rejection, rather than fighting the rejection.
PRACTICE TIP: Respond to the Examiner's request for information under 37 CFR 1.105 unless it is arbitrary and capricious; you can't use a review of the request for information as an alternative to a review of a substantive rejection.