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706.07   Final Rejection

MPEP SECTION SUMMARY This section discusses final rejections. The final rejection is used by an examiner to notify an applicant that his or her application has been examined and was deemed inappropriate in one way or another. Abandonment will follow unless the applicant takes the appropriate action.

The final rejection is used by an examiner to notify an applicant that his or her application has been examined and was deemed inappropriate in one way or another. Abandonment will follow unless the applicant takes the appropriate action.

MPEP SECTION SUMMARY This section covers situations when a final rejection is proper on a second action.

Second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims, nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee.

• A second or any subsequent action on the merits in any application will not be made final if it includes a rejection, on newly cited art, other than information submitted in an information disclosure statement, of any claim not amended by applicant or patent owner in spite of the fact that other claims may have been amended to require newly cited art.
• Where information is submitted in a reply to a requirement under 37 CFR 1.105, the examiner may NOT make the next Office action relying on that art final unless all instances of the application of such art are necessitated by amendment.

A second or any subsequent action on the merits in any application or patent involved in reexamination proceedings should not be made final if it includes a rejection, on prior art not of record, of any claim amended to include limitations which should reasonably have been expected to be claimed.

A second or any subsequent action on the merits in any application or patent involved in reexamination proceedings may not be made final if it contains a new ground of rejection necessitated by the amendments to pre-AIA 35 U.S.C. 102(e), unless the new ground of rejection was necessitated by an amendment to the claims or as a result of information submitted in an information disclosure statement.

• When applying any 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e)/103 references against the claims of an application the examiner should anticipate that a statement averring common ownership may qualify the applicant for the exemption under 35 U.S.C. 102(b)(2)(C) or a statement of common ownership at the time the invention was made may disqualify any patent or application applied in a rejection under 35 U.S.C. 103 based on 35 U.S.C. 102(e).
• If such a statement is filed in reply to the 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e)/103 rejection and the claims are not amended, the examiner may not make the next Office action final if a new rejection is made.

If a reference is disqualified under the joint research agreement provision of 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c) and a new subsequent double patenting rejection based upon the disqualified reference is applied, the next Office action, which contains the new double patenting rejection, may be made final even if applicant did not amend the claims (provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee.

Where the only changes in a rejection are based on treating the application to be subject to current 35 U.S.C. 102 rather than the version of 35 U.S.C. 102 in effect on March 15, 2013, (the pre-AIA version) or the reverse, and any prior art relied upon in the subsequent action was prior art under both versions of 35 U.S.C. 102, then the action may be made final.

MPEP SECTION SUMMARY This section covers situations when a final rejection is proper on a first action. Both the times when a final rejection on the first action are proper and improper are discussed.

  Section Frequency Chart

The claims of a new application may be finally rejected in the first Office action in those situations where:

• the new application is a continuing application of, or a substitute for, an earlier application, and;
  
• all claims of the new application
  • are drawn to the same invention claimed in the earlier application, and
    
  • would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application.

The claims of an application for which a request for continued examination (RCE) has been filed may be finally rejected in the action immediately subsequent to the filing of the RCE where all the claims in the application after the entry of the submission:

• are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114, and
  
• would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to the filing of the RCE.

It would not be proper to make final a first Office action in a continuing or substitute application or an RCE where that application contains material which was presented in the earlier application after final rejection or closing of prosecution but was denied entry because:

• new issues were raised that required further consideration and/or search, or
  
• the issue of new matter was raised.

Further, it would not be proper to make final a first Office action in a continuation-in-part application where any claim includes subject matter not present in the earlier application.

MPEP SECTION SUMMARY Any question as to prematureness of a final rejection should be raised, if at all, while the application is still pending before the primary examiner.

  Section Frequency Chart

MPEP SECTION SUMMARY If, on request by applicant for reconsideration, the primary examiner finds the final rejection to have been premature, he or she should withdraw the finality of the rejection. The examiner cannot withdraw the final rejection once the application is abandoned.

MPEP SECTION SUMMARY This section covers the withdrawal of a final rejection and how an applicant may accomplish this.

Once a final rejection that is not premature has been entered in an application/reexamination proceeding, it should not be withdrawn at the applicant’s or patent owner’s request except on a showing under 37 CFR 1.116(b).

• Further amendment or argument will be considered in certain instances.

An amendment that will place the application either in condition for allowance or in better form for appeal may be admitted.

Amendments complying with objections or requirements as to form are to be permitted after final action.

The examiner may withdraw the rejection of finally rejected claims.

• Although it is permissible to withdraw a final rejection for the purpose of entering a new ground of rejection, this practice is to be limited to situations where a new reference either fully meets at least one claim or meets it except for differences which are shown to be completely obvious. Normally, the previous rejection should be withdrawn with respect to the claim or claims involved.
• When a final rejection is withdrawn, all amendments filed after the final rejection are ordinarily entered.
  
  

MPEP SECTION SUMMARY The time for reply to a final rejection is discussed here including coverage of shortened statutory periods for reply.

  Section Frequency Chart

The time for reply to a final rejection is as follows:

• All final rejections setting a 3-month shortened statutory period (SSP) for reply should advise applicant that if the first reply is filed within 2 months of the date of the final Office action, the shortened statutory period will expire at 3 months from the date of the final rejection or on the date the advisory action is mailed, whichever is later. In no event can the statutory period for reply expire later than 6 months from the mailing date of the final rejection.
• This procedure of setting a variable reply period in the final rejection dependent on when applicant files a first reply to a final Office action does not apply to situations where a SSP less than 3 months is set, e.g., reissue litigation applications (1-month SSP) or any reexamination proceeding.

Where a complete first reply to a final Office action has been filed within 2 months of the final Office action, an examiner's amendment to place the application in condition for allowance may be made without the payment of extension fees even if the examiner's amendment is made more than 3 months from the date of the final Office action.


III.   PRACTICE AFTER FINAL

Interviews may be conducted after the expiration of the shortened statutory period for reply to a final Office action but within the 6-month statutory period for reply without the payment of an extension fee.

Formal matters which are identified for the first time after a reply is made to a final Office action and which require action by applicant to correct may be required in an Ex parte Quayle action if the application is otherwise in condition for allowance.

• No extension fees would be required since the reply puts the application in condition for allowance except for the correction of formal matters — the correction of which had not yet been required by the examiner.

If prosecution is to be reopened after a final Office action has been replied to, the finality of the previous Office action should be withdrawn to avoid the issue of abandonment and the payment of extension fees.

 

» 706.07(h)   Request for Continued Examination (RCE) Practice