How does an examiner handle new issues raised after final rejection in patent applications?
When new issues are raised after a final rejection in a patent application, the examiner must follow specific procedures as outlined in MPEP 706.07. The MPEP states:
“An amendment filed after a final rejection, but before or on the date of filing a Notice of Appeal, may be entered upon or after filing of an appeal brief or filing of a request for continued examination (RCE) pursuant to 37 CFR 1.114, if the amendment meets the requirements of 37 CFR 1.116.”
This means that:
- If the amendment is filed before or on the date of filing a Notice of Appeal, it may be entered if it meets the requirements of 37 CFR 1.116.
- The examiner can consider the amendment after the filing of an appeal brief or an RCE.
- If the amendment doesn’t meet the requirements or raises new issues, the examiner may refuse to enter it and maintain the final rejection.
The examiner’s decision depends on whether the new issues can be addressed without further search or consideration, and whether they were necessitated by the applicant’s amendment of the claims.
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