Second or any subsequent actions on the merits shall be final, except where the examiner introduces 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 during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). Where information is submitted in an information disclosure statement during the period set forth in 37 CFR 1.97(c) with a fee, the examiner may use the information submitted, e.g., a printed publication or evidence of public use, and make the next Office action final whether or not the claims have been amended, provided that no other new ground of rejection which was not necessitated by amendment to the claims is introduced by the examiner. See MPEP § 609.04(b). Furthermore, a second or any subsequent action on the merits in any application will not be made final if it includes a rejection on newly cited art other than information submitted in an information disclosure statement filed under 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p), of any claim not amended or amended in a way that does not necessitate a new ground of rejection by applicant or patent owner in spite of the fact that other claims may have been amended to require newly cited art. Where prior art is submitted in a reply to a requirement under 37 CFR 1.105, the examiner may NOT make the next Office action relying on that art final unless all instances of the application of such art are necessitated by amendment. A dependent claim is treated as amended if the independent claim or any claim it references is amended because a dependent claim incorporates all the subject matter of the referenced claim(s). See 35 U.S.C. 112(d) and 37 CFR 1.75.

Second or any subsequent actions on the merits shall be final, except where the examiner introduces 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 during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). Where information is submitted in an information disclosure statement during the period set forth in 37 CFR 1.97(c) with a fee, the examiner may use the information submitted, e.g., a printed publication or evidence of public use, and make the next Office action final whether or not the claims have been amended, provided that no other new ground of rejection which was not necessitated by amendment to the claims is introduced by the examiner. See MPEP § 609.04(b). Furthermore, a second or any subsequent action on the merits in any application will not be made final if it includes a rejection on newly cited art other than information submitted in an information disclosure statement filed under 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p), of any claim not amended or amended in a way that does not necessitate a new ground of rejection by applicant or patent owner in spite of the fact that other claims may have been amended to require newly cited art. Where prior art is submitted in a reply to a requirement under 37 CFR 1.105, the examiner may NOT make the next Office action relying on that art final unless all instances of the application of such art are necessitated by amendment. A dependent claim is treated as amended if the independent claim or any claim it references is amended because a dependent claim incorporates all the subject matter of the referenced claim(s). See 35 U.S.C. 112(d) and 37 CFR 1.75.

When a reference’s subject matter is excepted as prior art under the joint research agreement (JRA) provision of 35 U.S.C. 102(b)(2)(C) and 102(c) or a reference is disqualified as prior art under the JRA provision of pre-AIA 35 U.S.C. 103(c) and a pending rejection is thereby overcome, the examiner may need to make a new double patenting rejection based upon the excepted subject matter or disqualified reference in the next Office action. The next Office action may be made final even if applicant did not amend the claims (provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p)). The Office action is properly made final because the new double patenting rejection was necessitated by amendment of the application by applicant.

A second or any subsequent action on the merits in any application or patent involved in reexamination proceedings may not be made final if it contains a new ground of rejection necessitated by the amendments to pre-AIA 35 U.S.C. 102(e) by the Intellectual Property and High Technology Technical Amendments Act of 2002 (Public Law 107-273, 116 Stat. 1758 (2002)), unless the new ground of rejection was necessitated by an amendment to the claims or as a result of information submitted in an information disclosure statement under 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).

2. This form paragraph should not be used, and a final rejection is improper, where there is another new ground of rejection introduced by the examiner that was not necessitated by amendment to the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).

1. This form paragraph should not be used and a final rejection is improper where there is another new ground of rejection introduced by the examiner that was not necessitated by amendment to the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17.

Where the only changes in a rejection are based on treating the application as subject to current 35 U.S.C. 102 rather than the version of 35 U.S.C. 102 in effect on March 15, 2013, (the pre-AIA version) or the reverse, and any prior art relied upon in the subsequent action was prior art under both versions of 35 U.S.C. 102, then the action may be made final. For example, if a first action relied upon a reference as being available under pre-AIA 35 U.S.C. 102(e) and the subsequent action relied only on the same reference but under 35 U.S.C. 102(a)(2), the subsequent action may be made final assuming no new requirements or non-prior art rejections were made.

1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 / 103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.

If an applicant amends the claims without attempting to show patentable novelty, the examiner should not allow the claims. See MPEP § 714.04. The claims may be finally rejected if, in the opinion of the examiner, they are clearly open to rejection on grounds of record.

If an applicant amends the claims without attempting to show patentable novelty, the examiner should not allow the claims. See MPEP § 714.04. The claims may be finally rejected if, in the opinion of the examiner, they are clearly open to rejection on grounds of record.

1. This form paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP- 1 or 2 months).

2. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings.

Second or any subsequent actions on the merits shall be final, except where the examiner introduces 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 during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). Where information is submitted in an information disclosure statement during the period set forth in 37 CFR 1.97(c) with a fee, the examiner may use the information submitted, e.g., a printed publication or evidence of public use, and make the next Office action final whether or not the claims have been amended, provided that no other new ground of rejection which was not necessitated by amendment to the claims is introduced by the examiner. See MPEP § 609.04(b). Furthermore, a second or any subsequent action on the merits in any application will not be made final if it includes a rejection on newly cited art other than information submitted in an information disclosure statement filed under 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p), of any claim not amended or amended in a way that does not necessitate a new ground of rejection by applicant or patent owner in spite of the fact that other claims may have been amended to require newly cited art. Where prior art is submitted in a reply to a requirement under 37 CFR 1.105, the examiner may NOT make the next Office action relying on that art final unless all instances of the application of such art are necessitated by amendment. A dependent claim is treated as amended if the independent claim or any claim it references is amended because a dependent claim incorporates all the subject matter of the referenced claim(s). See 35 U.S.C. 112(d) and 37 CFR 1.75.

If rejoinder occurs after a first Office action on the merits and if any of the rejoined claims are unpatentable (e.g., a rejection under 35 U.S.C. 112(a) is made), the next Office action may be made final if the rejection of the rejoined claims was necessitated by applicant’s amendment, or based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 821.04 et seq. for more information on rejoinder.

A second or any subsequent action on the merits in any application or patent involved in reexamination proceedings should not be made final if it includes a rejection on prior art not of record of any claim amended to include limitations which should reasonably have been expected to be claimed. See MPEP § 904 et seq. However, note that an examiner cannot be expected to foresee whether or how an applicant will amend a claim to overcome a rejection except in very limited circumstances (e.g., where the examiner suggests how applicant can overcome a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph).

When applying any 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) / 103 references against the claims of an application, the examiner should anticipate that a statement averring common ownership may qualify the applicant for the exception under 35 U.S.C. 102(b)(2)(C) or a statement of common ownership at the time the invention was made may disqualify any patent or application applied in a rejection under 35 U.S.C. 103 based on 35 U.S.C. 102(e). If such a statement is filed in reply to the 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) / 103 rejection and the claims are not amended, the examiner may not make the next Office action final if a new rejection is made. See MPEP §§ 2146.03 and 2154.02(c).

When a reference’s subject matter is excepted as prior art under the joint research agreement (JRA) provision of 35 U.S.C. 102(b)(2)(C) and 102(c) or a reference is disqualified as prior art under the JRA provision of pre-AIA 35 U.S.C. 103(c) and a pending rejection is thereby overcome, the examiner may need to make a new double patenting rejection based upon the excepted subject matter or disqualified reference in the next Office action. The next Office action may be made final even if applicant did not amend the claims (provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p)). The Office action is properly made final because the new double patenting rejection was necessitated by amendment of the application by applicant.

When a reference’s subject matter is excepted as prior art under the joint research agreement (JRA) provision of 35 U.S.C. 102(b)(2)(C) and 102(c) or a reference is disqualified as prior art under the JRA provision of pre-AIA 35 U.S.C. 103(c) and a pending rejection is thereby overcome, the examiner may need to make a new double patenting rejection based upon the excepted subject matter or disqualified reference in the next Office action. The next Office action may be made final even if applicant did not amend the claims (provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p)). The Office action is properly made final because the new double patenting rejection was necessitated by amendment of the application by applicant.

Where the only changes in a rejection are based on treating the application as subject to current 35 U.S.C. 102 rather than the version of 35 U.S.C. 102 in effect on March 15, 2013, (the pre-AIA version) or the reverse, and any prior art relied upon in the subsequent action was prior art under both versions of 35 U.S.C. 102, then the action may be made final. For example, if a first action relied upon a reference as being available under pre-AIA 35 U.S.C. 102(e) and the subsequent action relied only on the same reference but under 35 U.S.C. 102(a)(2), the subsequent action may be made final assuming no new requirements or non-prior art rejections were made.

1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 / 103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.

3. In bracket 1, insert the filing date of the submission of the requirements for the joint research agreement prior art exception as defined under 35 U.S.C. 102(c).

2. In bracket 1, insert the filing date of the submission of the requirements for the joint research agreement prior art disqualification under pre-AIA 35 U.S.C. 103(c).