First Action Finals in Continuations

A few weeks ago, we were asked about the June 2020 changes to MPEP 706.07(b).  That section relates to the situations in which the first action in a continuation application can be made final. 

Specifically, this situation can arise when all the continuation claims would have been properly finally rejected on the grounds and art of record if the claims had been entered in the continuation’s parent application.  Previously, the situation required the continuation claims to be directed to the “same invention” as the parent application.  Following the June 2020 change, the situation now applies when all of the continuation claims “are either identical to or patentably indistinct from the claims in the earlier application (in other words, restriction under 37 CFR 1.145 would not have been proper if the new or amended claims had been entered in the earlier application).”) MPEP 706.07(b) (emphasis supplied).

Recently, our friend Nüni noted we had not discussed this issue.

At the outset, we entirely agree this change can be abused.  Previously, Applicants could easily argue the continuation claims were not directed to the “same invention” as the parent application.  Now, Applicants will likely struggle to argue a hypothetical restriction in the parent application would have been improper.  After all, Examiners frequently (usually?) do not find persuasive Applicants’ arguments that restriction is improper.  So, what prevents an Examiner from issuing a first action final rejection in every continuation?

First, the USPTO seems aware that Applicants would be upset if first action final rejections became common.  So, it is unlikely the USPTO will condone unfettered issuance of first action final rejections in all continuation applications.

Second, in our experience, the requirement of the same grounds and art of record for the rejection previously dominated the Examiner’s consideration of making the first action final.  That is, in most cases, the claims of the continuation application were unlikely to be rejected on the same grounds and art of record as the parent application.  So, the MPEP change might not be particularly significant.

Third, skilled prosecutors know a trick to minimize the likelihood of such a rejection.

So, what happens if an Examiner issues a first action final rejection?  We recommend beginning with an interview with the Examiner but culminating with a petition (if merited).

If there are any questions about avoiding a first action final rejection in a continuation application (or about the trick mentioned above), please contact us.

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