1. Final Office Action Practice
Kris Lynch
Patent Prosecution Luncheon
Woodard, Emhardt, Moriarty, McNett & Henry LLP

2. Final Rejection Defined
37 C.F.R. §
MPEP ,
May be issued on a first action
continuations having claims drawn to same invention as the parent and would have been a proper final rejection if entered in parent
Typically issued in a second or subsequent action
Woodard, Emhardt, Moriarty, McNett & Henry LLP

3. Was the Final Action Proper
Did the examiner introduce 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 filed after final? MPEP § (a)
If so, request that Examiner withdraw finality of the office action
Example: amendments after final were not entered but receive a final rejection in a first action in a continuation
Woodard, Emhardt, Moriarty, McNett & Henry LLP

4. Options for Responding
File a response w/ or w/out an amendment under 37 C.F.R. § 1.116
Amendments at discretion of examiner
Possible interview
File a declaration under 37 C.F.R. § 1.132
File a continuing application or request for continued examination (RCE)
Done to enter an amendment or consider new art
More time to prepare a declaration
Appeal to the Board of Patent Appeals and Interferences under 37 C.F.R. § 1.191
Woodard, Emhardt, Moriarty, McNett & Henry LLP

5. File a Response
Argue on the merits that the cited references do not apply
Examiner unlikely to withdraw final rejection if same arguments are presented
Likely only useful where remaining rejection(s) is very minor or where it is believed the Examiner has made an oversight
Woodard, Emhardt, Moriarty, McNett & Henry LLP

6. File an Amendment and Response under 37 C.F.R. § 1.116
To comply with Examiner’s suggestions
To reduce issues on appeal i.e., cancel claims
To present claims in better form for consideration on appeal
If they raise new issues of patentability, the Examiner will likely refuse to enter them
Woodard, Emhardt, Moriarty, McNett & Henry LLP

7. Advisory Action
If reply to final office action within 2 months, the shortened statutory period will expire at 3 months from final office action or from the date the advisory action is mailed from the PTO, whichever is later
Save on extension fees
In no event can the statutory period expire later than 6 months from date of final office action
Woodard, Emhardt, Moriarty, McNett & Henry LLP

8. File a Continuing Application
Continuation, divisional or CIP under 37 C.F.R. § 1.53(b)
Different filing date and serial number
Continued Prosecution Application under 37 C.F.R. § 1.53(d) (Designs only)
Woodard, Emhardt, Moriarty, McNett & Henry LLP

9. File a RCE under 37 C.F.R. § 1.114
Removes finality of most recent office action
Can be done by certificate of mailing
Same filing date and serial number
Requires a “submission”
Typically a response under 37 C.F.R. § if an outstanding office action exists
Also requires a fee set forth in 37 C.F.R. § 1.17(e)
Woodard, Emhardt, Moriarty, McNett & Henry LLP

10. Continuation vs. RCE
Continuation if want to keep application pending longer to target infringers or to provoke an interference
or to prepare a declaration
Continuation if some claims are allowed and want an issued patent while pursuing rejected claims in another application
Continuation if claims are going to be independent and distinct from parent 37 C.F.R. § 1.145
Woodard, Emhardt, Moriarty, McNett & Henry LLP

11. Continuation vs. RCE Continued
RCEs generally have a lower cost
Save on additional claim fees
RCEs have a faster turnaround time
Generally no double patenting issues
Easiest choice if looking to simply have an amendment or piece of prior art considered
Woodard, Emhardt, Moriarty, McNett & Henry LLP

12. New PTO Rules (Rumors) If received first office action on the merits
2 Continuations + 1 RCE
If no first office action on the merits
3 Continuations + 1 RCE
No limit on divisionals
Possible implementation in September-November
Woodard, Emhardt, Moriarty, McNett & Henry LLP

13. Strategies for New Rules
Review applications to determine how many continuations/RCEs have been filed or are likely to be filed in the future
Only option at final may be to appeal
Woodard, Emhardt, Moriarty, McNett & Henry LLP

14. Appeals Can appeal any claim that has been rejected twice
Doesn’t require a final action
File a Notice of Appeal under 37 C.F.R. § 1.191(a)
Within 3 months extendable to 6 months
Used as a tool to avoid abandonment
File an Appeal Brief under 37 C.F.R. § 192(b)
2 months from of Notice of Appeal (measured from day of receipt) extendable for another 5 months
Can also file an RCE which effectively removes the appeal request MPEP §
Woodard, Emhardt, Moriarty, McNett & Henry LLP

15. Pre-Appeal Brief Conference Pilot Program
File at same time as Notice of Appeal
5 or less total pages
Decision within 45 days
Use if rejections are clearly not proper and are without basis
e.g., limitation is not met by a reference or the Examiner failed to show proper motivation for making a modification in an obviousness rejection
Woodard, Emhardt, Moriarty, McNett & Henry LLP

16. Appeals Continued Board reverses: Board Affirms:
Forwarded to Examiner to issue a Notice of Allowance
Board Affirms:
Abandonment
File continuation
Abandon parent
Petition Board for rehearing under 37 C.F.R. § 1.197
Bring civil action in district court for DC under 35 U.S.C. § 146
Appeal to Federal Circuit
Woodard, Emhardt, Moriarty, McNett & Henry LLP

17. Final Action Strategies
Some Allowed Claims
Respond to try and overcome the rejected claims
Cancel rejected claims and pursue them in a continuation
May not be best option once new rules are implemented
May end up on appeal
Woodard, Emhardt, Moriarty, McNett & Henry LLP

18. Final Action Strategy Continued
All Claims Remain Rejected
Try to negotiate allowance with the Examiner
RCE or Continuation
Consider filing notice of appeal to delay response
Appeal
To limit prosecution history
If no intention of amending or otherwise limiting claim scope
Woodard, Emhardt, Moriarty, McNett & Henry LLP