[Patentpractice] Question about First Action Final after RCE

[Alan Taboada]

According to what I see in the MPEP sections Roger cited to:

MPEP 706.07(h)(VIII)
VIII. FIRST ACTION FINAL AFTER FILING AN RCE

The action immediately subsequent to the filing of an RCE with a submission and fee under 37 CFR 1.114<https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html#d0e322625> may be made final only if the conditions set forth in MPEP § 706.07(b)<https://www.uspto.gov/web/offices/pac/mpep/s706.html#d0e69408> are met.

It would not be proper to make final a first Office action immediately after the filing of an RCE if the first Office action includes a new ground of rejection. See MPEP § 1207.03<https://www.uspto.gov/web/offices/pac/mpep/s1207.html#d0e125671> for a discussion of what may constitute a new ground of rejection.

Form paragraph 7.42.09<https://www.uspto.gov/web/offices/pac/mpep/s706.html#fp7.42.09> should be used if it is appropriate to make the first action after the filing of the RCE final.

Form paragraph 7.42.09 recites in relevant part:

All claims are identical to, patentably indistinct from, or have unity of invention with the claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114.

In my experience the fight is typically whether “all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114.”

Roger states “the amendment clearly presented new issues”, but does the office action raise new issues or merely reject the amended claims using the same art and grounds as in the prior office action?


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of David Boundy via Patentpractice
Sent: Thursday, March 6, 2025 3:34 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: David Boundy <PatentProcedure at gmail.com>
Subject: Re: [Patentpractice] Question about First Action Final after RCE

I had this once about 20 years ago.  I talked to (I think it was Magdalen Greenlief, then the editor of the MPEP.)  She said "Yup, that's what it means."  I asked about futility and the like.  She said "No we want you to file the amendment."  (No, we want your extension fees.  Forward progress is not the PTO's business model.  I didn't say that.  That was back before I became totally cynical--but I guess it was a major factor in getting me to think that way.)  But this section of the MPEP has been revised about 3-4-5 years ago -- it might be different now.

On Thu, Mar 6, 2025 at 2:56 PM Roger Browdy via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>> wrote:
The RCE procedure (as explained in the MPEP) is strange as it provides that an examiner cannot make the next action final if an amendment after final was not entered by means of an Advisory Action.  See MPEP 706.07(b), 4th paragraph.  However, if the RCE is filed on the same day as the amendment after final, for example, and an Advisory Action was never issued, the examiner can make the next action final, even though the amendment clearly presented new issues so that it would never have been entered had an advisory action been issued.  The literal language of the MPEP permits this (see MPEP 706.07(h)(VIII) and form paragraph 7.42.09).  On the other hand, I know that many examiners and supervisors interpret it differently and would never make the next action final if the amendment clearly raised new issues, even if no advisory action had been issued refusing entry and even though after-final practice would technically permit it.

I am filing a petition to withdraw finality in such a case, but I would like any input from anyone who may have filed such a petition in the past or otherwise has any insight into the issue of whether the PTO policy is to make such after-RCE actions final or not.  I have seen blogs where some have said that the action cannot be made final if the response raises new arguments on patentability.  But this is not what MPEP 706-07(b) says, which MPEP 706.07(h)(VIII) says should be applied in such a situation.

Roger L. Browdy
Partner
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