What 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:
“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) where all the claims in the application after the entry of the submission under 37 CFR 1.114 and any entered supplemental amendments (A) are either identical to or patentably indistinct from the claims in the application prior to the entry of the submission under 37 CFR 1.114, 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.”
Second Action Final Rejection: This is more common and occurs when the examiner makes a second or any subsequent action on the merits final, provided that the conditions specified in MPEP 706.07(a) are met.
The key difference is that a first action final rejection is based on the relationship between the current application and its parent or a previous RCE filing, while a second action final rejection follows a non-final office action in the same application.
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