MPEP § 706.07(b) — Final Rejection, When Proper on First Action (Annotated Rules)
§706.07(b) Final Rejection, When Proper on First Action
This page consolidates and annotates all enforceable requirements under MPEP § 706.07(b), including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Final Rejection, When Proper on First Action
This section addresses Final Rejection, When Proper on First Action. Primary authority: 37 CFR 1.114), 37 CFR 1.114, and 37 CFR 1.145. Contains: 1 requirement, 1 prohibition, and 3 permissions.
Key Rules
First Action on Merits (FAOM)
In certain situations, the claims of a new application may be finally rejected in the first Office action or the claims of an application for which a request for continued examination (RCE) has been filed may be finally rejected in the action immediately subsequent to the filing of the RCE (with a submission and fee under 37 CFR 1.114).
For a new application, claims may be finally rejected in the first Office action when (A) the new application is a continuing application of, or a substitute for, an earlier application, and (B) all claims of the new application (1) are identical to, patentably indistinct from, or have unity of invention with, the claims in the earlier application (in other words, restriction (including lack of unity) would not have been proper if the new or amended claims had been entered in the earlier application), and (2) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application.
For an application in which an RCE has been filed, claims may be finally rejected in the first action following the filing of the RCE (with a submission and fee under 37 CFR 1.114) when all the claims in the application after the entry of the submission under 37 CFR 1.114 and any entered supplemental amendments (A) 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 (in other words, restriction (including lack of unity of invention) would not have been proper if the new or amended claims had been entered prior to the filing of the RCE), and (B) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to the filing of the RCE under 37 CFR 1.114. Note that applicants cannot use an RCE to obtain continued examination on the basis of claims that are independent and distinct from, or lack unity of invention with, the claims previously claimed and examined as a matter of right (i.e., applicant cannot switch inventions). See 37 CFR 1.145 and MPEP § 706.07(h), subsection VI. Therefore, condition (A) is always met where the RCE is accompanied by a submission that will be entered as a matter of right.
Reissue and Reexamination
3. This form paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP-1 or 2 months).
4. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings.
RCE Filing Requirements
For an application in which an RCE has been filed, claims may be finally rejected in the first action following the filing of the RCE (with a submission and fee under 37 CFR 1.114) when all the claims in the application after the entry of the submission under 37 CFR 1.114 and any entered supplemental amendments (A) 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 (in other words, restriction (including lack of unity of invention) would not have been proper if the new or amended claims had been entered prior to the filing of the RCE), and (B) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to the filing of the RCE under 37 CFR 1.114. Note that applicants cannot use an RCE to obtain continued examination on the basis of claims that are independent and distinct from, or lack unity of invention with, the claims previously claimed and examined as a matter of right (i.e., applicant cannot switch inventions). See 37 CFR 1.145 and MPEP § 706.07(h), subsection VI. Therefore, condition (A) is always met where the RCE is accompanied by a submission that will be entered as a matter of right.
Final Office Action
It would not be proper to make final a first Office action in a continuing or substitute application 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. Similarly, it would not be proper to make final a first Office action after the filing of an RCE where material was presented after final rejection or closing of prosecution and prior to the filing of the RCE, 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.
Continued Prosecution Applications
1. This form paragraph is for a first action final rejection in a Continued Prosecution Application filed under 37 CFR 1.53(d) (design applications only).
Examiner Form Paragraphs
Examiner form paragraphs are standard language that you might see in an Office Action or communication from the USPTO. Examiners have latitude to change the form paragraphs, but you will often see this exact language.
This is a [1] of applicant’s earlier Application No. [2] . All claims are identical to, patentably indistinct from, or have unity of invention with the invention claimed in the earlier application (that is, restriction (including lack of unity) would not be proper) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b) . Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a) .
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Citations
| Primary topic | Citation |
|---|---|
| First Action on Merits (FAOM) RCE Filing Requirements | 37 CFR § 1.114 |
| Reissue and Reexamination | 37 CFR § 1.136(a) |
| First Action on Merits (FAOM) RCE Filing Requirements | 37 CFR § 1.145 |
| Continued Prosecution Applications | 37 CFR § 1.53(d) |
| – | MPEP § 706.07(b) |
| First Action on Merits (FAOM) RCE Filing Requirements | MPEP § 706.07(h) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 706.07(b) — Final Rejection, When Proper on First Action
Source: USPTO706.07(b) Final Rejection, When Proper on First Action [R-01.2024]
In certain situations, the claims of a new application may be finally rejected in the first Office action or the claims of an application for which a request for continued examination (RCE) has been filed may be finally rejected in the action immediately subsequent to the filing of the RCE (with a submission and fee under 37 CFR 1.114).
For a new application, claims may be finally rejected in the first Office action when (A) the new application is a continuing application of, or a substitute for, an earlier application, and (B) all claims of the new application (1) are identical to, patentably indistinct from, or have unity of invention with, the claims in the earlier application (in other words, restriction (including lack of unity) would not have been proper if the new or amended claims had been entered in the earlier application), and (2) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application.
For an application in which an RCE has been filed, claims may be finally rejected in the first action following the filing of the RCE (with a submission and fee under 37 CFR 1.114) when all the claims in the application after the entry of the submission under 37 CFR 1.114 and any entered supplemental amendments (A) 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 (in other words, restriction (including lack of unity of invention) would not have been proper if the new or amended claims had been entered prior to the filing of the RCE), and (B) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to the filing of the RCE under 37 CFR 1.114. Note that applicants cannot use an RCE to obtain continued examination on the basis of claims that are independent and distinct from, or lack unity of invention with, the claims previously claimed and examined as a matter of right (i.e., applicant cannot switch inventions). See 37 CFR 1.145 and MPEP § 706.07(h), subsection VI. Therefore, condition (A) is always met where the RCE is accompanied by a submission that will be entered as a matter of right.
It would not be proper to make final a first Office action in a continuing or substitute application 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. Similarly, it would not be proper to make final a first Office action after the filing of an RCE where material was presented after final rejection or closing of prosecution and prior to the filing of the RCE, 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.
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.
A request for an interview prior to first action on a continuing or substitute application should ordinarily be granted.
A first action final rejection should be made by using Form Paragraphs 7.41 or 7.41.03, as appropriate.
¶ 7.41 Action Is Final, First Action
This is a [1] of applicant’s earlier Application No. [2]. All claims are identical to, patentably indistinct from, or have unity of invention with the invention claimed in the earlier application (that is, restriction (including lack of unity) would not be proper) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
- 1. In bracket 1, insert either –continuation– or –substitute–, as appropriate.
- 2. If an amendment was refused entry in the parent case on the grounds that it raised new issues or new matter, this form paragraph cannot be used. See MPEP § 706.07(b).
- 3. This form paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP-1 or 2 months).
- 4. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings.
¶ 7.41.03 Action Is Final, First Action Following Submission Under 37 CFR 1.53(d), Continued Prosecution Application (CPA) in a Design Application
All claims are identical to or patentably indistinct from the invention claimed in the parent application prior to the filing of this Continued Prosecution Application under 37 CFR 1.53(d) (that is, restriction would not be proper) and could have been finally rejected on the grounds and art of record in the next Office action. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing under 37 CFR 1.53(d). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
- 1. This form paragraph is for a first action final rejection in a Continued Prosecution Application filed under 37 CFR 1.53(d) (design applications only).
- 2. This form paragraph must be preceded by one of form paragraphs 2.30 or 2.35, as appropriate.
¶ 7.42.09 Action Is Final, First Action Following Request for Continued Examination under 37 CFR 1.114
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. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
This form paragraph is for a first action final rejection following a Request for Continued Examination filed under 37 CFR 1.114.