Title: Avoiding a First-Action Final Office Action - May 14, 2018

Avoiding a First-Action Final Office Action

Edward Ryan, [email protected]

There is a natural rhythm to patent prosecution, from non-final, to amendment, to final, to RCE, but that rhythm can be disrupted by an aggressive patent examiner. While the patent practitioner generally expects a new non-final Office Action after filing an RCE or continuing application, a first-action Final Office Action can sometimes result. This cuts off many of the applicant’s options for advancing prosecution and there are few events in patent prosecution that are more frustrating.

The Patent Office’s policies for imposing Final Office Actions seem to vary from art unit to art unit. While many art units appear to have more generous policies than those dictated by the MPEP, some primary examiners take particular pleasure in trapping unwary prosecutors. The only guidance that the MPEP provides can be found in §706.07(b), “FINAL REJECTION, WHEN PROPER ON FIRST ACTION.”

With some exceptions, to be addressed in greater detail below, the conditions for a first-action Final Office Action are:

  1. The Office Action follows the filing of a continuing application or an RCE;
  2. All claims are drawn to the “same invention;” and
  3. All claims would have been properly finally rejected “on the grounds and art of record” if they had been entered in the prior application or before the RCE.

While it is simple to determine whether point 1 is satisfied, the terms “same invention” and “the grounds and art of record” are not defined in §706.07(b). This leaves substantial room for interpretation by different examiners.

Other sections of the MPEP do provide some guidance. The term, “same invention,” is related to concepts found in restriction practice and double-patenting rejections. For example, MPEP §804.01 says quite clearly, “‘Same invention’ means identical subject matter,” citing case law dealing with questions of double patenting. MPEP §2301.03, dealing with pre-AIA interference proceedings, takes a less strict approach and asserts, “The Office practice and the case law define ‘same invention’ to mean patentably indistinct inventions.”

Following the “identical subject matter” standard, essentially any change to the scope of a claim would establish that the amended claim is not directed to the “same invention.” Following the “patentably indistinct inventions” standard, the amended claim would be directed to the “same invention” unless the amendment itself introduced a novel and non-obvious feature.

As a result of these two conflicting standards, it is difficult to convincingly argue that a minor amendment is not “the same invention.” Furthermore, doing so undermines any attempt to couch an amendment as being a mere clarification and could potentially expose the application to a restriction requirement.

Turning to the third condition, some insight regarding the term, “the grounds and art of record,” can be derived from appeals practice. In particular, MPEP §1207.03(A) addresses the whether the Examiner has introduced a new ground of rejection in an answer to an appeal. MPEP §1207.03(A)(II) lays out examples of circumstances that do not give rise to new grounds of rejection. Following the principles of appeals practice, if a rejection for the amended claim can be made using the same teachings cited previously in the art, that would be a rejection based in the grounds and art of record.

However, citing disparate sections of the MPEP after the fact to argue against finality is not a winning strategy. A first challenge lies in convincing the examiner that the rules for appeals and double patenting rejections apply to the question of final Office Actions. The second challenge lies in convincing an examiner, one who has already taken an uncommonly aggressive stance, to withdraw the finality and incur the corresponding penalty based on a relatively obscure technicality.

With this sparse guidance in mind, some best practices for proactively avoiding the first-action Final Office Action can be inferred. When filing a continuing application or an RCE, amendments that incorporate some element that previously was not considered will help with both the “same invention” and “grounds and art of record” points. This new element could be added to an existing claim or could be added as a new dependent claim. Because the Examiner will need to formulate a new rejection for the new feature, a new non-final Office Action should be issued.

On the other hand, caution should be exercised when an amendment simply brings a feature from a dependent claim up into an independent claim. The new rejection could potentially be based on the same citations to the same references as the old rejection, making the grounds of rejection the same. Furthermore, the new independent claim would, by any reckoning, claim the “same invention” as the original dependent claim, though it is arguable whether this reasoning would cover any other dependent claims that have changed in scope.

Aside from taking care when selecting the subject matter of an amendment, there is one other step a practitioner can proactively take to protect against the first-action Final Office Action. MPEP 706.07(b) states:

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 the earlier application after final rejection or closing of prosecution but was denied entry because (A) new issues were raised that required further consideration and/or search, or (B) the issue of new matter was raised.

Thus the MPEP provides that a first-action final rejection is improper if the amendment was proposed after-final and denied entry as raising new issues or introducing new matter. So while an after-final amendment does not guarantee a new non-final Office Action (after all, the Examiner may still claim that the rejection is covered by the original grounds of rejection), it can improve the chances of advancing prosecution with an effective amendment.

In view of the above, the best way to avoid receiving a first-action Final rejection combines three different tactics:

  1. An after-final amendment that attempts to enter the planned amendment;
  2. The introduction of at least one feature that has not already been considered; and
  3. The avoidance of an amendment that simply moves already-rejected features to an independent claim.

The procedures set out in MPEP §706.07(d) were designed to prevent applicants from unreasonably extending prosecution through the use RCEs without making substantive changes to the claims. While that is a reasonable goal, it is a tool that can be used by unreasonable examiners to cost applicants substantial amounts of money in unnecessary RCE fees. Keeping the risk of a first-action final Office Action in mind when drafting an amendment can steer you clear of a costly misstep and can help you avoid an awkward conversation with your client.


Ed Ryan is a patent attorney in Long Island, NY. He has ten years of experience in patent prosecution, with hundreds of applications drafted and prosecuted to allowance. Ed has found that the quality of the patent application is only one piece of a successful prosecution—the rest lies in managing the patent examiner.


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