[Patentpractice] Question about First Action Final after RCE

Thu Mar 6 21:03:49 UTC 2025

The definition of "new ground" at MPEP *§ 1207.03
<https://www.uspto.gov/web/offices/pac/mpep/s1207.html#d0e125671>*  is
remarkably underinclusive.   See https://www.u
spto.gov/sites/default/files/patents/law/comments/ieee_20130204.pdf  for a
more-complete work-up.

On Thu, Mar 6, 2025 at 3:51 PM Alan Taboada via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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> 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), 4
> th 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
>
> _____________________________________________
>
> *FisherBroyles, LLP*
>
> direct: +1 202-277-5198
>
> *roger.browdy at fisherbroyles.com <roger.browdy at fisherbroyles.com>*
>
>
> https://link.edgepilot.com/s/5952be9f/5uYE2we9k0iO_KZ9ZeZHvQ?u=http://www.fisherbroyles.com/
>
>
>
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