Takeaway: The Examiner is allowed to take you final on the first OA after the RCE if he doesn't find your arguments persuasive AND as long as one of two other conditions is met: a) you didn't make any claim amendments with the RCE; or b) you made claim amendments, but didn't present them in an After-Final response.
706.07(b) Final Rejection, When Proper on First ActionSimply put, the first OA after an RCE can be final when a) the claims could have been finally rejected if entered prior to the RCE; and b) the claims are drawn to the same invention as before.
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 (A) are drawn to the same invention claimed 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.
Before parsing these two conditions, note the same section of the MPEP lists an important exception:
However, 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.The way I read this, you're safe from final-on-first-OA-after-RCE as long as you follow this procedure:
- File an After-Final response with claim amendments.
- Wait for the Advisory Action denying entry of the amendments.
- File an RCE to get those amendments entered.
I think there are reasons to prefer going straight to the RCE rather than taking the AF-AA-RCE route. One is that the AF must be filed within two months to avoid EOT fees. Even if you do hit the two-month date, you're going to owe at least the 1-month EOT unless you file the RCE on the very same day the PTO mails the AA.
So if you want to go straight to RCE, how can you reduce your vulnerability to final-on-first-OA-after-RCE? We need to parse the pair of conditions that allow final-on-first-OA-after-RCE:
- All claims are drawn to the same invention as before.
- All claims could have been finally rejected if entered prior to the RCE.
So let's assume that your claim amendments do meet the "same invention" prong. Even so, the Examiner can't take you final immediately after the RCE unless the second "could have been finally rejected" prong is also met.
Clearly, your claims "could have been finally rejected" if the Examiner finds all the elements in the references already of record. Put another way, if the Examiner has to introduce a new reference, he can't issue a final rejection, and you're safe.
Intuitively, you can see that the more your amendment changes claim scope, the less likely it is the Examiner can find everything in the references of record. In this respect, an amendment that adds a whole new feature is more likely to produce a new reference than one that merely clarifies something (e.g., "wherein the method is implemented in a computer" or "wherein the first and the second widgets are different"). Even when adding a new feature, you might want convince yourself that none of those secondary references discloses the added feature.
Perhaps a middle ground approach is the following. If you're making substantive amendments that narrow significantly, go straight to RCE because you're counting on the Examiner having to introduce a new reference. But if you're making smaller clarifying amendments, first try to get them in After-Final.
For what it's worth, it's rare that I see this final-on-first-OA-after-RCE situation.