What situations prevent a first Office action from being made final in a continuing application?
There are specific situations where it would not be proper to make a first Office action final in a continuing application. According to MPEP 706.07(b):
“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 (A) new issues were raised that required further consideration and/or search, or (B) the issue of new matter was raised.”
Additionally, the MPEP states: “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.”
These restrictions ensure that applicants have a fair opportunity to address new issues or subject matter before a final rejection is made.
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