What is the difference between a first action final rejection and a second or subsequent action final rejection?
The main difference between a first action final rejection and a second or subsequent action final rejection lies in the circumstances under which they can be made: First action final rejection: This is relatively rare and can only be made in specific situations, such as when all claims are drawn to the same invention claimed…
Read MoreWhat is the difference between a first action final rejection and a second action final rejection in patent examination?
The MPEP 706.07 distinguishes between first action final rejections and second action final rejections in patent examination: First Action Final Rejection: This is relatively rare and occurs when all claims are drawn to the same invention claimed in the application’s parent case and were subject to a final rejection in that case. The MPEP states:…
Read MoreWhat is the difference between a first action final rejection and a regular final rejection?
What is the difference between a first action final rejection and a regular final rejection? A first action final rejection occurs when an examiner issues a final rejection in the first Office action of a continuing application, while a regular final rejection typically comes after at least one non-final rejection. The MPEP 706.07(b) states: ‘The…
Read MoreCan a final rejection be issued after a non-responsive amendment?
Yes, a final rejection can be issued after a non-responsive amendment if the claims are clearly open to rejection on grounds of record. The MPEP 714.04 states: However, if the claims as amended are clearly open to rejection on grounds of record, a final rejection should generally be made. This means that even if an…
Read MoreCan an examiner make a rejection final after a first Office action on the merits?
Generally, an examiner cannot make a rejection final after a first Office action on the merits. However, there are exceptions to this rule. According to MPEP 706.07: ‘Under present practice, 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…
Read MoreHow do extensions of time work with final rejections?
For final rejections, the USPTO has a specific procedure for extensions of time. The MPEP states: If an applicant initially replies within 2 months from the date of mailing of any final rejection setting a 3-month shortened statutory period for reply and the Office does not mail an advisory action until after the end of…
Read MoreHow should an examiner indicate a first action final rejection?
When an examiner needs to make a first action final rejection, they should use specific form paragraphs provided in the Manual of Patent Examining Procedure (MPEP). According to MPEP 706.07(b): “A first action final rejection should be made by using Form Paragraphs 7.41 or 7.41.03, as appropriate.” The MPEP provides specific form paragraphs for different…
Read MoreWhen can an examiner’s amendment be made without extension fees?
An examiner’s amendment can be made without the payment of extension fees under certain circumstances, as outlined in MPEP 706.07(f): “Where a complete first reply to a final Office action has been filed within 2 months of the final Office action, an examiner’s amendment to place the application in condition for allowance may be made…
Read MoreWhat criteria does an examiner use to grant an interview after final rejection?
An examiner will grant an interview after final rejection if they believe it can lead to a resolution with minimal additional consideration. According to MPEP 713.09: Such an interview may be granted if the examiner is convinced that disposal or clarification for appeal may be accomplished with only nominal further consideration. This means the examiner…
Read MoreHow does filing a reply within 2 months affect the reply period?
Filing a complete first reply within 2 months of the final Office action can affect the reply period in several ways: If the reply places the application in condition for allowance, it will be processed as an allowance with no extension fees due. If the reply nearly places the application in condition for allowance, except…
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