Final Office Action Practice
Kris Lynch
Patent Prosecution Luncheon
Woodard, Emhardt, Moriarty,
McNett & Henry LLP
Final Rejection Defined
• 37 C.F.R. § 1.113-114
• MPEP 706.07, 714.12-13
• May be issued on a first action
– continuations having claims drawn to same
invention as the parent and would have been
a proper final rejection if entered in parent
• Typically issued in a second or
subsequent action
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McNett & Henry LLP
Was the Final Action Proper
• Did the examiner introduce 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 after final? MPEP §
706.07(a)
• If so, request that Examiner withdraw finality of
the office action
– Example: amendments after final were not entered
but receive a final rejection in a first action in a
continuation
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McNett & Henry LLP
Options for Responding
• File a response w/ or w/out an amendment
under 37 C.F.R. § 1.116
– Amendments at discretion of examiner
– Possible interview
• File a declaration under 37 C.F.R. § 1.132
• File a continuing application or request for
continued examination (RCE)
– Done to enter an amendment or consider new art
– More time to prepare a declaration
• Appeal to the Board of Patent Appeals and
Interferences under 37 C.F.R. § 1.191
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McNett & Henry LLP
File a Response
• Argue on the merits that the cited
references do not apply
– Examiner unlikely to withdraw final rejection if
same arguments are presented
• Likely only useful where remaining
rejection(s) is very minor or where it is
believed the Examiner has made an
oversight
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McNett & Henry LLP
File an Amendment and
Response under 37 C.F.R. § 1.116
• To comply with Examiner’s suggestions
• To reduce issues on appeal i.e., cancel
claims
• To present claims in better form for
consideration on appeal
• If they raise new issues of patentability,
the Examiner will likely refuse to enter
them
Woodard, Emhardt, Moriarty,
McNett & Henry LLP
Advisory Action
• If reply to final office action within 2
months, the shortened statutory period will
expire at 3 months from final office action
or from the date the advisory action is
mailed from the PTO, whichever is later
– Save on extension fees
– In no event can the statutory period expire
later than 6 months from date of final office
action
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McNett & Henry LLP
File a Continuing Application
• Continuation, divisional or CIP under 37
C.F.R. § 1.53(b)
– Different filing date and serial number
• Continued Prosecution Application under
37 C.F.R. § 1.53(d) (Designs only)
Woodard, Emhardt, Moriarty,
McNett & Henry LLP
File a RCE under
37 C.F.R. § 1.114
• Removes finality of most recent office
action
– Can be done by certificate of mailing
– Same filing date and serial number
• Requires a “submission”
– Typically a response under 37 C.F.R. § 1.111
if an outstanding office action exists
• Also requires a fee set forth in 37 C.F.R. §
1.17(e)
Woodard, Emhardt, Moriarty,
McNett & Henry LLP
Continuation vs. RCE
• Continuation if want to keep application pending
longer to target infringers or to provoke an
interference
– or to prepare a declaration
• Continuation if some claims are allowed and
want an issued patent while pursuing rejected
claims in another application
• Continuation if claims are going to be
independent and distinct from parent 37 C.F.R. §
1.145
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McNett & Henry LLP
Continuation vs. RCE Continued
• RCEs generally have a lower cost
– Save on additional claim fees
• RCEs have a faster turnaround time
• Generally no double patenting issues
• Easiest choice if looking to simply have an
amendment or piece of prior art
considered
Woodard, Emhardt, Moriarty,
McNett & Henry LLP
New PTO Rules (Rumors)
• If received first office action on the merits
– 2 Continuations + 1 RCE
• If no first office action on the merits
– 3 Continuations + 1 RCE
• No limit on divisionals
• Possible implementation in SeptemberNovember
Woodard, Emhardt, Moriarty,
McNett & Henry LLP
Strategies for New Rules
• Review applications to determine how
many continuations/RCEs have been filed
or are likely to be filed in the future
• Only option at final may be to appeal
Woodard, Emhardt, Moriarty,
McNett & Henry LLP
Appeals
• Can appeal any claim that has been rejected
twice
– Doesn’t require a final action
• File a Notice of Appeal under 37 C.F.R. §
1.191(a)
– Within 3 months extendable to 6 months
– Used as a tool to avoid abandonment
• File an Appeal Brief under 37 C.F.R. § 192(b)
– 2 months from of Notice of Appeal (measured from
day of receipt) extendable for another 5 months
– Can also file an RCE which effectively removes the
appeal request MPEP § 1215.01
Woodard, Emhardt, Moriarty,
McNett & Henry LLP
Pre-Appeal Brief Conference
Pilot Program
• File at same time as Notice of Appeal
– 5 or less total pages
– Decision within 45 days
• Use if rejections are clearly not proper and
are without basis
– e.g., limitation is not met by a reference or the
Examiner failed to show proper motivation for
making a modification in an obviousness
rejection
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McNett & Henry LLP
Appeals Continued
• Board reverses:
– Forwarded to Examiner to issue a Notice of
Allowance
• Board Affirms:
– Abandonment
– File continuation
• Abandon parent
– Petition Board for rehearing under 37 C.F.R. § 1.197
– Bring civil action in district court for DC under 35
U.S.C. § 146
– Appeal to Federal Circuit
Woodard, Emhardt, Moriarty,
McNett & Henry LLP
Final Action Strategies
• Some Allowed Claims
– Respond to try and overcome the rejected
claims
– Cancel rejected claims and pursue them in a
continuation
• May not be best option once new rules are
implemented
• May end up on appeal
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McNett & Henry LLP
Final Action Strategy Continued
• All Claims Remain Rejected
– Try to negotiate allowance with the Examiner
– RCE or Continuation
• Consider filing notice of appeal to delay response
– Appeal
• To limit prosecution history
• If no intention of amending or otherwise limiting
claim scope
Woodard, Emhardt, Moriarty,
McNett & Henry LLP