What is the purpose of a ‘closing prosecution’ action in patent examination?
A ‘closing prosecution’ action in patent examination serves to finalize the examination process and prepare the application for potential appeal or abandonment. The MPEP 714.12 mentions: “The examiner should treat such a reply under 37 CFR 1.116 in the same manner as any amendment after final rejection … with a view toward closing prosecution.” The…
Read MoreHow are replies after final processed and considered by the USPTO?
The USPTO has specific guidelines for processing and considering replies after a final rejection, as outlined in MPEP 706.07(f): “Replies after final should be processed and considered promptly by all Office personnel.” This emphasizes the importance of timely handling of these responses. “Replies after final should not be considered by the examiner unless they are…
Read MoreWhat is the procedure for withdrawing a final rejection to apply a new ground of rejection?
Withdrawing a final rejection to apply a new ground of rejection is a specific procedure outlined in MPEP 706.07(e). The manual states: “Although it is permissible to withdraw a final rejection for the purpose of entering a new ground of rejection, this practice is to be limited to situations where a new reference either fully…
Read MoreHow does the USPTO handle prior art exceptions after final rejection?
The USPTO gives special consideration to submissions concerning prior art exceptions even after a final rejection. As stated in MPEP 714.12: Applicant’s submissions concerning the prior art exception under 35 U.S.C. 102(b)(2)(C) or prior art disqualification under pre-AIA 35 U.S.C. 103(c) are entitled to being considered even after a final rejection has been made. If…
Read MoreWhat is the difference between a prima facie rejection and a final rejection in patent examination?
What is the difference between a prima facie rejection and a final rejection in patent examination? In patent examination, there are two main types of rejections: Prima facie rejection: This is an initial rejection based on the examiner’s first review of the application. The MPEP states, To make a prima facie case of unpatentability, the…
Read MoreWhat 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…
Read MoreWhat should be done before requesting an interview after final rejection?
Before requesting an interview after final rejection, it’s important to clearly communicate the purpose and content of the proposed interview. The MPEP 713.09 states: Prior to the interview, the intended purpose and content of the interview should be presented briefly, preferably in writing. This preparation helps the examiner determine if the interview is likely to…
Read MoreWhat is the difference between the prematurity and tenability of a final rejection?
The MPEP 706.07(c) distinguishes between the prematurity and tenability of a final rejection. It states that the question of prematureness “is purely a question of practice, wholly distinct from the tenability of the rejection.” This means: Prematurity refers to whether the final rejection was issued at the appropriate time in the examination process. Tenability refers…
Read MoreHow is a premature final rejection different from the tenability of a rejection?
The prematureness of a final rejection is distinct from the tenability (validity) of the rejection itself. As stated in MPEP 706.07(c): This is purely a question of practice, wholly distinct from the tenability of the rejection. In other words: Prematureness refers to whether the applicant has been given a fair opportunity to respond to the…
Read MoreWhat is a premature final rejection in patent examination?
A premature final rejection occurs when an examiner makes a rejection final before the applicant has been given a fair opportunity to react to the rejection. According to MPEP 706.07(c): Any question as to prematureness of a final rejection should be raised, if at all, while the application is still pending before the primary examiner.…
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