When can an examiner make a first action final rejection in patent examination?
An examiner can make a first action final rejection in specific circumstances, as outlined in MPEP 706.07(b). The main situations where this is permissible include:
- 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.
- In the case of a continuing application (not a CIP) where the claims are drawn to the same invention claimed in an earlier application, even if all claims of the pending application are not identical to the claims in the earlier application.
- In an application filed under 37 CFR 1.53(d) as a continuing application of a prior application, where the claims are drawn to the same invention claimed in the prior application.
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.”
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