Monday, January 11, 2010

Does an RCE always buy two more rounds of prosecution?

Do you expect an RCE to buy you two more rounds of prosecution? That's surely what happens in the vast majority of cases. However, a strict reading of MPEP 706.07(b) seems to say that under limited circumstances, an RCE only buys you one round.

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.

Digging deeper:
706.07(b) Final Rejection, When Proper on First Action
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.
Simply 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.

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.
Since this safe-harbor provision only applies when amendments or evidence was "denied entry," you're not safe if you argue without amending claims. In such a case, the Examiner can immediately take you final if he doesn't find your arguments persuasive.

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.
I consider "drawn to the same invention" to be a term of art which refers to restriction practice. Thus, I'm hesitant to argue that some of my claims are not drawn to the same invention, even if doing so could avoid final-on-first-OA-after-RCE, because it leaves me vulnerable to a restriction requirement.

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.

10 comments:

  1. In practice, having filed hundreds of RCEs, I've never received a final-on-first-OA-after-RCE. This may be related to my personal approach to prosecution. I'm going to avoid an RCE (and the fees) if possible. So if I have any argument that the amendments are merely clarifying, I file the after final response. If I can't make that argument, the amendments are substantial and the Examiner won't go Final.

    I'm actually surprised that this doesn't happen more often, though, given the Examiners' pressure to generate counts. The quicker they can go to Final, the quicker they generate counts.

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  2. >having filed hundreds of RCEs,I've never
    >received a final-on-first-OA-after-RCE.

    I can't actually recall it happening to me either. But in the past two or three weeks, I've heard about it from several attorneys, which prompted me to look into it and then write about it.

    I did say this situation was "rare". With this new data point, maybe I should revise to "incredibly rare".

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  3. If you are concerned about receiving a first action final rejection, I suggest filing the RCE with a new dependent claim directed to a feature not found in the cited references.

    Then, the Examiner cannot say that the new dependent claim "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," because rejecting the dependent claim requires new art.

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  4. >filing the RCE with a new dependent claim
    >directed to a feature not found in the cited
    >references.

    Michael,

    Thanks for sharing this great idea. I've used that strategy for continuations many times, but it didn't occur to me while writing my post that this works for RCEs too.

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  5. "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. "

    Actually if the examiner knows he has your entire invention, knows his stuff and wants to set you up for the FAF then he'll allow your AF amendment and state that you'd get rejected anyway, stating briefly why.

    You'll be 100% safe from the FAF according to your method only if you get around the prior art and have substantively amended.

    As Michael stated, this could be done in a new dep in some circumstances.

    First action final is really just there to stop jokers that want to sit and argue about the same claims without amending by continually filing RCE's. That is, it helps provide motivation to move prosecution along, even if that movement is an inch.

    "drawn to the same invention""

    The office generally construes that to mean that the claims are not substantively different from one another. Although claims that fall into that category could also be open to restriction that is not what is being referred to.

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  6. >You'll be 100% safe from the FAF according to
    >your method only if you get around the prior
    >art and have substantively amended.

    Well, my method *assumed* the Examiner did not enter the AF, whereas under your scenario he *did* enter your AF. So I don't think your statement actually contradicts mine :-)

    But you make a great point -- that simply *filing* the AF doesn't guarantee avoidance of FAF. And thanks for clearing up any confusion my statement may have caused.

    >The office generally construes [drawn to the
    >same invention] to mean that the claims are
    >not substantively different from one another
    >[rather than meaning "could be restricted"

    Thanks for that info. Then I really wish the MPEP had used something other than "same invention", because I think that term is misleading.

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  7. I routinely receive first action finals after RCE. This is particularly galling after interviewing after final, no less, when the Examiner indicated that he or she generally concurs with my proposed claim amendment. A first action final after RCE typically signals to me that the case is going nowhere, and I will appeal 95% of the times that happens.

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  8. americanipa,

    It's good to have another data point. I believe you deal mostly with mechanical art units. Perhaps FAF is one of those practices that varies greatly between art units. I suspect (without any statistics to back it up) that restriction practice is another one that varies greatly.

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  9. I'm not sure that in practice it would make a big difference, but it seems to me like 70.07(b) is reading that BOTH conditions of A) and B), need to be met for it to be proper for the first one to final, instead of merely either of A) and B) needing to be met. If it were either, then the rule would have used OR instead of and.

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  10. americanipa:
    "I routinely receive first action finals after RCE. This is particularly galling after interviewing after final, no less, when the Examiner indicated that he or she generally concurs with my proposed claim amendment."

    If I am interviewing after final, I generally enquire of the examiner, "What is your group's policy&quot on this. In most cases, I get a reply that suggests directly filing the RCE.

    I don't know if the group art units (the SPEs) establish policy regarding this, or if it is mostly just a matter of individual practice by examiners. I think most examiners would prefer to have the case resolved than go through the Advisory Action procedure.

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