How does rejoinder affect the finality of Office actions?
Rejoinder can impact the finality of Office actions in patent examination. MPEP 821.04 provides guidance on this issue:
“The provisions of MPEP § 706.07 govern the propriety of making an Office action final in rejoinder situations.”
Key points about rejoinder and final Office actions:
- If rejoinder occurs after the first Office action on the merits, and if any of the rejoined claims are unpatentable, the next Office action may be made final if proper under MPEP § 706.07(a)
- If rejoinder occurs before the first Office action on the merits, it would not be proper to make the first Office action final if rejoined claims do not comply with all statutory requirements
- For product and process claims, if all product claims are allowable in the first Office action, it would not be proper to make the action final if rejoined process claims do not comply with 35 U.S.C. 112, first paragraph
The MPEP states: “If rejoinder occurs after the first Office action on the merits, and if any of the rejoined claims are unpatentable, e.g., if a rejection under 35 U.S.C. 112, first paragraph is made, then the next Office action may be made final where the new ground of rejection was necessitated by applicant’s amendment.”
Examiners must carefully consider the timing of rejoinder and the status of rejoined claims when determining whether an Office action can be made final.
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