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 in an earlier application and would have been properly finally rejected in the earlier application.
- Second or subsequent action final rejection: This is more common and can be made when the examiner introduces no new ground of rejection that was not necessitated by the applicant’s amendment or IDS filing.
As stated in MPEP 706.07(a): “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 by applicant’s amendment of the claims, nor based on information submitted in an information disclosure statement.”
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