706.02(a) [Reserved] [R-10.2019]

[Editor Note: Information pertaining to rejections under 35 U.S.C. 102(a)(1) or (a)(2) and pre-AIA 35 U.S.C. 102(a), (b), or (e) based on a printed publication or patent has been moved to MPEP § 2120.01.]

706.02(b) [Reserved] [R-10.2019]

[Editor Note: Information pertaining to overcoming a 35 U.S.C. 102 rejection based on a printed publication or patent has been moved to MPEP § 2120.01.]

706.02(c) [Reserved] [R-10.2019]

[Editor Note: Information pertaining to rejections under 35 U.S.C. 102(a)(1) and pre-AIA 35 U.S.C. 102(a) or (b) based on knowledge by others or public use or sale has been moved to MPEP § 2120.02.]

706.02(d) [Reserved] [R-10.2019]

[Editor Note: Information pertaining to rejections under pre-AIA 35 U.S.C. 102(c) has been moved to MPEP § 2134.]

706.02(e) [Reserved] [R-10.2019]

[Editor Note: Information pertaining to rejections under pre-AIA 35 U.S.C. 102(d) has been moved to MPEP § 2135.]

706.02(f) [Reserved] [R-10.2019]

[Editor Note: Information pertaining to rejections under pre-AIA 35 U.S.C. 102(e) has been moved to MPEP § 2136.]

706.02(g) [Reserved] [R-10.2019]

[Editor Note: Information pertaining to rejections under pre-AIA 35 U.S.C. 102(f) has been moved to MPEP § 2137.]

706.02(h) [Reserved] [R-10.2019]

[Editor Note: Information pertaining to rejections under pre-AIA 35 U.S.C. 102(g) has been moved to MPEP § 2138.]

706.02(i) [Reserved] [R-10.2019]

[Editor Note: Form paragraphs for use in rejections under AIA 35 U.S.C. 102 have been moved to MPEP § 2152.07, and form paragraphs for use in rejections under pre-AIA 35 U.S.C. 102 have been moved to MPEP § 2139.03.]

706.02(j) [Reserved] [R-10.2019]

[Editor Note: Information pertaining to the contents of a 35 U.S.C. 103 rejection has been moved to MPEP § 2142.]

706.02(k) [Reserved] [R-10.2019]

[Editor Note: Information pertaining to provisional obviousness rejections using provisional prior art under pre-AIA 35 U.S.C. 102(e) has been moved to MPEP § 2146.03(a), and information pertaining to the requirements to claim the benefit of a prior filed application under 35 U.S.C. 120 has been moved to MPEP § 2109, subsection VI.]

706.02(l) [Reserved] [R-10.2019]

[Editor Note: Information pertaining to the applicability of pre-AIA 35 U.S.C. 103(c) to obviousness rejections using prior art under only pre-AIA 35 U.S.C. 102(e), (f), or (g) has been moved to MPEP § 2146.]

706.02(m) [Reserved] [R-10.2019]

[Editor Note: Form paragraphs for making rejections under pre-AIA 35 U.S.C. 103(a) have been moved to MPEP § 2148 and form paragraphs for making rejections under AIA 35 U.S.C. 103 have been moved to MPEP § 2158.01. In addition, form paragraph 7.06.01 has been moved to MPEP § 2124.01.]

706.02(n) [Reserved] [R-10.2019]

[Editor Note: Information pertaining to biotechnology process applications and pre-AIA 35 U.S.C. 103(b) has been moved to MPEP § 2147.]

706.03(a) [Reserved] [R-10.2019]

[Editor Note: The overview of the requirements of 35 U.S.C. 101 has been moved to MPEP § 2104. Form paragraphs for use in rejections based on lack of subject matter eligibility have been moved to MPEP § 2106.07(a)(1), the form paragraph for use in rejecting a claim as being directed to a human organism has been moved to MPEP § 2105, form paragraphs for use in rejections based on lack of utility have been moved to MPEP § 2107.02, subsection IV, and form paragraphs for use in rejecting claims based on improper inventorship in applications subject to AIA 35 U.S.C. 102 have been moved to MPEP § 2157.]

706.03(b) [Reserved] [R-10.2019]

[Editor Note: Information pertaining to patents barred by the Atomic Energy Act has been moved to MPEP § 2104.01.]

706.03(c) [Reserved] [R-10.2019]

[Editor Note: Form paragraphs for use in rejections made under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, have been moved to MPEP § 2166.]

706.03(d) [Reserved] [R-10.2019]

[Editor Note: Form paragraphs for use in rejections made under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, have been moved to MPEP § 2175.]

706.03(e) [Reserved] [R-10.2019]

[Editor Note: Form paragraphs for use in rejections made under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, have been moved to MPEP § 2187.]

706.03(f) - 706.03(j) [Reserved]

706.03(k) [Reserved] [R-10.2019]

[Editor Note: Information pertaining to duplicate claims has been moved to MPEP § 608.01(m).]

706.03(l) - 706.03(n) [Reserved]

706.03(o) [Reserved] [R-10.2019]

[Editor Note: Information pertaining to objection to an amendment that adds new matter to the specification has been moved to MPEP § 608.04(a).]

706.03(p) - 706.03(r) [Reserved]

706.03(s) [Reserved] [R-10.2019]

[Editor Note: Information pertaining to foreign filing without a foreign filing license has been moved to MPEP § 140, subsection III.]

706.03(t) [Reserved]

706.03(u) [Reserved] [R-10.2019]

[Editor Note: Information pertaining to rejections based on disclaimer has been moved to MPEP § 2304.04(c).]

706.03(v) [Reserved] [R-10.2019]

[Editor Note: For rejections following an interference, see MPEP Chapter 2300. Effective September 16, 2012, former 37 CFR. 1.292 authorizing petitions seeking institution of public use proceedings was removed from title 37. For information regarding rejections after the institution of public use proceedings, see MPEP § 706.03(v) of the August 2012 revision of the MPEP available from www.uspto.gov/web/offices/pac/mpep/old/ mpep_E8R9.htm.]

706.03(w) [Reserved] [R-10.2019]

[Editor Note: Information pertaining to rejections based on res judicata has been moved to MPEP § 2190, subsection II.]

706.03(x) [Reserved] [R-10.2019]

[Editor Note: The examination of reissue applications is covered in MPEP Chapter 1400. See especially MPEP § 1412.03 for rejection of improperly broadened reissue claims, MPEP § 1444 for rejection of claims as being based on a defective reissue oath or declaration, and MPEP § 1442 for the special status of reissue applications.]

706.03(y) [Reserved] [R-10.2019]

[Editor Note: Information pertaining to improper Markush groupings has been moved to MPEP § 2117.]

706.07(a) Final Rejection, When Proper on Second Action [R-01.2024]

Second or any subsequent actions on the merits shall be final, except where the examiner introduces 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 during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). Where information is submitted in an information disclosure statement during the period set forth in 37 CFR 1.97(c) with a fee, the examiner may use the information submitted, e.g., a printed publication or evidence of public use, and make the next Office action final whether or not the claims have been amended, provided that no other new ground of rejection which was not necessitated by amendment to the claims is introduced by the examiner. See MPEP § 609.04(b). Furthermore, a second or any subsequent action on the merits in any application will not be made final if it includes a rejection on newly cited art other than information submitted in an information disclosure statement filed under 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p), of any claim not amended or amended in a way that does not necessitate a new ground of rejection by applicant or patent owner in spite of the fact that other claims may have been amended to require newly cited art. Where prior art is submitted in a reply to a requirement under 37 CFR 1.105, the examiner may NOT make the next Office action relying on that art final unless all instances of the application of such art are necessitated by amendment. A dependent claim is treated as amended if the independent claim or any claim it references is amended because a dependent claim incorporates all the subject matter of the referenced claim(s). See 35 U.S.C. 112(d) and 37 CFR 1.75.

For guidance in determining what constitutes a new ground of rejection, see MPEP § 1207.03(a).

If rejoinder occurs after a first Office action on the merits and if any of the rejoined claims are unpatentable (e.g., a rejection under 35 U.S.C. 112(a) is made), the next Office action may be made final if the rejection of the rejoined claims was necessitated by applicant’s amendment, or based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 821.04et seq. for more information on rejoinder.

A second or any subsequent action on the merits in any application or patent involved in reexamination proceedings should not be made final if it includes a rejection on prior art not of record of any claim amended to include limitations which should reasonably have been expected to be claimed. See MPEP § 904 et seq. However, note that an examiner cannot be expected to foresee whether or how an applicant will amend a claim to overcome a rejection except in very limited circumstances (e.g., where the examiner suggests how applicant can overcome a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph).

A second or any subsequent action on the merits in any application or patent involved in reexamination proceedings may not be made final if it contains a new ground of rejection necessitated by the amendments to pre-AIA 35 U.S.C. 102(e) by the Intellectual Property and High Technology Technical Amendments Act of 2002 (Public Law 107-273, 116 Stat. 1758 (2002)), unless the new ground of rejection was necessitated by an amendment to the claims or as a result of information submitted in an information disclosure statement under 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).

When applying any 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e)/103 references against the claims of an application, the examiner should anticipate that a statement averring common ownership may qualify the applicant for the exception under 35 U.S.C. 102(b)(2)(C) or a statement of common ownership at the time the invention was made may disqualify any patent or application applied in a rejection under 35 U.S.C. 103 based on 35 U.S.C. 102(e). If such a statement is filed in reply to the 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e)/103 rejection and the claims are not amended, the examiner may not make the next Office action final if a new rejection is made. See MPEP §§ 2146.03 and 2154.02(c).

When a reference’s subject matter is excepted as prior art under the joint research agreement (JRA) provision of 35 U.S.C. 102(b)(2)(C) and 102(c) or a reference is disqualified as prior art under the JRA provision of pre-AIA 35 U.S.C. 103(c) and a pending rejection is thereby overcome, the examiner may need to make a new double patenting rejection based upon the excepted subject matter or disqualified reference in the next Office action. The next Office action may be made final even if applicant did not amend the claims (provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p)). The Office action is properly made final because the new double patenting rejection was necessitated by amendment of the application by applicant.

Where the only changes in a rejection are based on treating the application as subject to current 35 U.S.C. 102 rather than the version of 35 U.S.C. 102 in effect on March 15, 2013, (the pre-AIA version) or the reverse, and any prior art relied upon in the subsequent action was prior art under both versions of 35 U.S.C. 102, then the action may be made final. For example, if a first action relied upon a reference as being available under pre-AIA 35 U.S.C. 102(e) and the subsequent action relied only on the same reference but under 35 U.S.C. 102(a)(2), the subsequent action may be made final assuming no new requirements or non-prior art rejections were made.

If an applicant amends the claims without attempting to show patentable novelty, the examiner should not allow the claims. See MPEP § 714.04. The claims may be finally rejected if, in the opinion of the examiner, they are clearly open to rejection on grounds of record.

Form paragraph 7.40 should be used where an action is made final including new grounds of rejection necessitated by applicant’s amendment.

706.07(b) Final Rejection, When Proper on First Action [R-01.2024]

In certain situations, the claims of a new application may be finally rejected in the first Office action or 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).

For a new application, claims may be finally rejected in the first Office action when (A) the new application is a continuing application of, or a substitute for, an earlier application, and (B) all claims of the new application (1) are identical to, patentably indistinct from, or have unity of invention with, the claims in the earlier application (in other words, restriction (including lack of unity) would not have been proper if the new or amended claims had been entered in the earlier application), and (2) 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 earlier application.

For an application in which an RCE has been filed, claims may be finally rejected in the first action following the filing of the RCE (with a submission and fee under 37 CFR 1.114) when all the claims in the application after the entry of the submission under 37 CFR 1.114 and any entered supplemental amendments (A) are identical to, patentably indistinct from, or have unity of invention with the claims in the application prior to the entry of the submission under 37 CFR 1.114 (in other words, restriction (including lack of unity of invention) would not have been proper if the new or amended claims had been entered prior to the filing of the RCE), 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. Note that applicants cannot use an RCE to obtain continued examination on the basis of claims that are independent and distinct from, or lack unity of invention with, the claims previously claimed and examined as a matter of right (i.e., applicant cannot switch inventions). See 37 CFR 1.145 and MPEP § 706.07(h), subsection VI. Therefore, condition (A) is always met where the RCE is accompanied by a submission that will be entered as a matter of right.

It would not be proper to make final a first Office action in a continuing or substitute application 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. Similarly, it would not be proper to make final a first Office action after the filing of an RCE where material was presented after final rejection or closing of prosecution and prior to the filing of the RCE, 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.

Further, it would not be proper to make final a first Office action in a continuation-in-part application where any claim includes subject matter not present in the earlier application.

A request for an interview prior to first action on a continuing or substitute application should ordinarily be granted.

A first action final rejection should be made by using Form Paragraphs 7.41 or 7.41.03, as appropriate.

706.07(c) Final Rejection, Premature [R-11.2013]

Any question as to prematureness of a final rejection should be raised, if at all, while the application is still pending before the primary examiner. This is purely a question of practice, wholly distinct from the tenability of the rejection. It may therefore not be advanced as a ground for appeal, or made the basis of complaint before the Patent Trial and Appeal Board. It is reviewable by petition under 37 CFR 1.181. See MPEP § 1002.02(c).

706.07(d) Final Rejection, Withdrawal of, Premature [R-08.2012]

If, on request by applicant for reconsideration, the primary examiner finds the final rejection to have been premature, he or she should withdraw the finality of the rejection. The finality of the Office action must be withdrawn while the application is still pending. The examiner cannot withdraw the final rejection once the application is abandoned.

Once the finality of the Office action has been withdrawn, the next Office action may be made final if the conditions set forth in MPEP § 706.07(a) are met.

Form paragraph 7.42 should be used when withdrawing the finality of the rejection of the last Office action.

706.07(e) Withdrawal of Final Rejection, General [R-08.2012]

See MPEP § 714.12 and § 714.13 for amendments after final rejection.

Once a final rejection that is not premature has been entered in an application/reexamination proceeding, it should not be withdrawn at the applicant’s or patent owner’s request except on a showing under 37 CFR 1.116(b). Further amendment or argument will be considered in certain instances. An amendment that will place the application either in condition for allowance or in better form for appeal may be admitted. Also, amendments complying with objections or requirements as to form are to be permitted after final action in accordance with 37 CFR 1.116(a).

The examiner may withdraw the rejection of finally rejected claims. If new facts or reasons are presented such as to convince the examiner that the previously rejected claims are in fact allowable or patentable in the case of reexamination, then the final rejection should be withdrawn. Occasionally, the finality of a rejection may be withdrawn in order to apply a new ground of rejection.

Although it is permissible to withdraw a final rejection for the purpose of entering a new ground of rejection, this practice is to be limited to situations where a new reference either fully meets at least one claim or meets it except for differences which are shown to be completely obvious. Normally, the previous rejection should be withdrawn with respect to the claim or claims involved. See MPEP § 1207.03 for a discussion of what may constitute a new ground of rejection.

The practice should not be used for application of subsidiary references, or of cumulative references, or of references which are merely considered to be better than those of record.

When a final rejection is withdrawn, all amendments filed after the final rejection are ordinarily entered.

New grounds of rejection made in an Office action reopening prosecution after the filing of an appeal brief require the approval of the supervisory patent examiner. See MPEP § 1002.02(d).

706.07(f) Time for Reply to Final Rejection [R-10.2019]

The time for reply to a final rejection is as follows:

• (A) All final rejections setting a 3-month shortened statutory period (SSP) for reply should contain one of form paragraphs 7.39, 7.40, 7.40.01, 7.40.02.fti, 7.40.02.aia, 7.41, 7.41.03, 7.42.03.fti, 7.42.031.fti, or 7.42.09 advising applicant that if the first reply is filed within 2 months of the date of the final Office action, the shortened statutory period will expire at 3 months from the date of the final rejection or on the date the advisory action is mailed, whichever is later. Thus, a variable reply period will be established. If the last day of “2 months of the date of the final Office action” falls on Saturday, Sunday, or a federal holiday within the District of Columbia, and a reply is filed on the next succeeding day which is not a Saturday, Sunday, or a federal holiday, pursuant to 37 CFR 1.7(a), the reply is deemed to have been filed within the 2 months period and the shortened statutory period will expire at 3 months from the date of the final rejection or on the mailing date of the advisory action, whichever is later (see MPEP § 710.05). In no event can the statutory period for reply expire later than 6 months from the mailing date of the final rejection.
• (B) This procedure of setting a variable reply period in the final rejection dependent on when applicant files a first reply to a final Office action does not apply to situations where a SSP less than 3 months is set, e.g., reissue litigation applications (1-month SSP) or any reexamination proceeding.

I. ADVISORY ACTIONS

• (C) Where the final Office action sets a variable reply period as set forth in paragraph (A) above AND applicant files a complete first reply to the final Office action within 2 months of the date of the final Office action, the examiner must determine if the reply:
  • (1) places the application in condition for allowance — then the application should be processed as an allowance and no extension fees are due;
  • (2) places the application in condition for allowance except for matters of form which the examiner can change without authorization from applicant, MPEP § 1302.04 — then the application should be amended as required and processed as an allowance and no extension fees are due; or
  • (3) does not place the application in condition for allowance — then the advisory action should inform applicant that the SSP for reply expires 3 months from the date of the final rejection or as of the mailing date of the advisory action, whichever is later, by checking box 1.b) at the top portion of the Advisory Action form, PTOL-303.

• (D) Where the final Office action sets a variable reply period as set forth in paragraph (A) above, and applicant does NOT file a complete first reply to the final Office action within 2 months, examiners should check box 1.a) at the top portion of the Advisory Action form, PTOL-303.

• (E) When box 1.b) at the top portion of the Advisory Action form, PTOL-303 is checked, the time for applicant to take further action (including the calculation of extension fees under 37 CFR 1.136(a)) begins to run 3 months from the date of the final rejection, or from the date of the advisory action, whichever is later. Extension fees cannot be prorated for portions of a month. In no event can the statutory period for reply expire later than 6 months from the date of the final rejection. For example, if applicant initially replies within 2 months from the date of mailing of a final rejection and the examiner mails an advisory action before the end of 3 months from the date of mailing of the final rejection, the shortened statutory period will expire at the end of 3 months from the date of mailing of the final rejection. In such case, if a petition for extension of time is granted, the due date for a reply is computed from the date stamped or printed on the Office action with the final rejection. See MPEP § 710.01(a). If the examiner, however, does not mail an advisory action until after the end of the 3-month period, the shortened statutory period will expire on the date the examiner mails the advisory action and any extension of time fee would be calculated from the mailing date of the advisory action.

II. EXAMINER’S AMENDMENTS

• (F) Where a complete first reply to a final Office action has been filed within 2 months of the final Office action, an examiner’s amendment to place the application in condition for allowance may be made without the payment of extension fees even if the examiner’s amendment is made more than 3 months from the date of the final Office action. Note that an examiner’s amendment may not be made more than 6 months from the date of the final Office action, as the application would be abandoned at that point by operation of law.
• (G) Where a complete first reply to a final Office action has not been filed within 2 months of the final Office action, applicant’s authorization to make an amendment to place the application in condition for allowance must be made either within the 3 month shortened statutory period or within an extended period for reply that has been petitioned and paid for by applicant pursuant to 37 CFR 1.136(a). However, an examiner’s amendment correcting only formal matters that are identified for the first time after a reply is made to a final Office action would not require any extension fee, since the reply to the final Office action put the application in condition for allowance except for the correction of formal matters, the correction of which had not yet been required by the examiner.
• (H) An extension of time under 37 CFR 1.136(a) requires a petition for an extension and the appropriate fee provided for in 37 CFR 1.17. Where an extension of time is necessary to place an application in condition for allowance (e.g., when an examiner’s amendment is necessary after the shortened statutory period for reply has expired), applicant may file the required petition and fee or give authorization to the examiner to make the petition of record and charge a specified fee to a deposit account. Office employees may not accept oral (telephonic) instructions to complete the Credit Card Payment Form or otherwise charge a patent process fee (as opposed to information product or service fees) to a credit card. When authorization to make a petition for an extension of time of record is given to the examiner, the authorization must be given before the extended period expires. The authorization must be made of record in an examiner’s amendment by indicating the name of the person making the authorization, when the authorization was given, the deposit account number to be charged, the length of the extension requested and the amount of the fee to be charged to the deposit account. Form Paragraph 13.02.02 should be used.

III. PRACTICE AFTER FINAL

• (I) Replies after final should be processed and considered promptly by all Office personnel.
• (J) Replies after final should not be considered by the examiner unless they are filed within the SSP or are accompanied by a petition for an extension of time and the appropriate fee (37 CFR 1.17 and 37 CFR 1.136(a)). See also MPEP § 710.02(e). This requirement also applies to supplemental replies filed after the first reply.
• (K) Interviews may be conducted after the expiration of the shortened statutory period for reply to a final Office action but within the 6-month statutory period for reply without the payment of an extension fee.
• (L) Formal matters that are identified for the first time after a reply is made to a final Office action and that require action by applicant to correct may be required in an Ex parte Quayle action if the application is otherwise in condition for allowance. No extension fees would be required since the reply puts the application in condition for allowance except for the correction of formal matters — the correction of which had not yet been required by the examiner.
• (M) If prosecution is to be reopened after a final Office action has been replied to, the finality of the previous Office action should be withdrawn to avoid the issue of abandonment and the payment of extension fees. For example, if a new reference comes to the attention of the examiner which renders unpatentable a claim indicated to be allowable, the Office action should begin with a statement to the effect: “The finality of the Office action mailed is hereby withdrawn in view of the new ground of rejection set forth below.” Form paragraph 7.42 could be used in addition to this statement. See MPEP § 706.07(d).

706.07(g) Transitional After-Final Practice [R-07.2015]

In order to facilitate the completion of prosecution of applications pending in the USPTO as of June 8, 1995 and to ease the transition between a 17-year patent term and a 20-year patent term, Public Law 103-465 provided for the further limited reexamination of an application pending for 2 years or longer as of June 8, 1995, taking into account any reference made in the application to any earlier filed application under 35 U.S.C. 120, 121, or 365(c). The further limited reexamination permits applicants to present for consideration, as a matter of right upon payment of a fee, a submission after a final rejection has been issued on an application. An applicant will be able to take advantage of this provision on two separate occasions provided the submission and fee are presented prior to the filing of the Appeal Brief and prior to abandonment of the application. This will have the effect of enabling an applicant to essentially remove the finality of the prior Office action in the pending application on two separate occasions by paying a fee for each occasion, and avoid the impact of refiling the application to obtain consideration of additional claims and/or information relative to the claimed subject matter. The transitional after-final practice is only available to applications filed on or before June 8, 1995 and it is not available for reissue or design applications or reexamination proceedings.

The following flowchart illustrates the transitional after-final procedures set forth in 37 CFR 1.129(a).

Effective June 8, 1995, in any pending application having an actual or effective filing date of June 8, 1993 or earlier, applicant is entitled, under 37 CFR 1.129(a), to have a first submission after final rejection entered and considered on the merits, if the submission and the fee set forth in 37 CFR 1.17(r) are filed prior to the filing of an Appeal Brief under 37 CFR 41.37and prior to abandonment. For an application entering national stage under 35 U.S.C. 371 or an application filed under 35 U.S.C. 111(a) claiming benefit under 35 U.S.C. 120 of a PCT application designating the U.S., the PCT international filing date will be used to determine whether the application has been pending for at least 2 years as of June 8, 1995.

Form paragraph 7.41.01.fti may be used to notify applicant that the application qualifies under 37 CFR 1.129(a).

The submission under 37 CFR 1.129(a) may comprise, but is not limited to, an information disclosure statement (IDS), an amendment to the written description, claims or drawings, a new substantive argument and/or new evidence. No amendment considered as a result of payment of the fee set forth in 37 CFR 1.17(r) may introduce new matter into the disclosure of the application 35 U.S.C. 132. In view of the fee set forth in 37 CFR 1.17(r), any (IDS) previously refused consideration in the application because of applicant’s failure to comply with 37 CFR 1.97(c) or (d) will be treated as though it has been filed within one of the time periods set forth in 37 CFR 1.97(b) and will be considered without the petition and petition fee required in 37 CFR 1.97(d), if it complies with the requirements of 37 CFR 1.98. Any IDS submitted under 37 CFR 1.129(a)on or after June 8, 2005 without a statement specified in 37 CFR 1.97(e) will be treated as though it had been filed within the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). The examiner may introduce a new ground of rejection based on the information submitted in the IDS and make the next Office action final provided that the examiner introduces no other new ground of rejection, which has not been necessitated by amendment to the claims. See MPEP § 706.07(a).

If the application qualifies under 37 CFR 1.129(a), that is, it was filed on or before June 8, 1995 and the application has an effective U.S. filing date of June 8, 1993 or earlier, the examiner must check to see if the submission and 37 CFR 1.17(r) fee were filed prior to the filing of the Appeal Brief and prior to abandonment of the application. If an amendment was timely filed in reply to the final rejection but the fee set forth in 37 CFR 1.17(r) did not accompany the amendment, examiners will continue to consider these amendments in an expedited manner as set forth in MPEP § 714.13 and issue an advisory action notifying applicant whether the amendment has been entered. If the examiner indicated in an advisory action that the amendment has not been entered, applicant may then pay the fee set forth in 37 CFR 1.17(r) and any necessary fee to avoid abandonment of the application and obtain entry and consideration of the amendment as a submission under 37 CFR 1.129(a). If the submission and the fee set forth in 37 CFR 1.17(r) were timely filed in reply to the final rejection and no advisory action has been issued prior to the payment of the fee set forth in 37 CFR 1.17(r), no advisory action will be necessary. The examiner will notify applicant that the finality of the previous office action has been withdrawn pursuant to 37 CFR 1.129(a). It is noted that if the submission is accompanied by a “conditional” payment of the fee set forth in 37 CFR 1.17(r), i.e., an authorization to charge the fee set forth in 37 CFR 1.17(r) to a deposit account or to a credit card in the event that the submission would not otherwise be entered, the Office will treat the conditional payment as an unconditional payment of the 37 CFR 1.17(r) fee.

The finality of the final rejection is automatically withdrawn upon the timely filing of the submission and payment of the fee set forth in 37 CFR 1.17(r). Upon the timely payment of the fee set forth in 37 CFR 1.17(r), all previously unentered submissions, and submissions filed with the 37 CFR 1.17(r) fee will be entered in the order in which they were filed absent specific instructions for entry. Any conflicting amendments should be clarified for entry by the applicant upon payment of the 37 CFR 1.17(r) fee. Form paragraph 7.42.01.fti should be used to notify applicant that the finality of the previous Office action has been withdrawn.

If a Notice of Appeal and the appeal fee set forth in 37 CFR 41.20(b) were filed prior to or with the payment of the fee set forth 37 CFR 1.17(r), the payment of the fee set forth in 37 CFR 1.17(r) by applicant is construed as a request to dismiss the appeal and to continue prosecution under 37 CFR 1.129(a).

Upon the timely payment of the fee set forth in 37 CFR 1.17(r), if the examiner determines that the submission is not fully responsive to the previous Office action, e.g., if the submission only includes an information disclosure statement, applicant will be given a new shortened statutory period of 2 months to submit a complete reply. Form paragraph 7.42.02.fti should be used.

I. SUBMISSIONS UNDER 37 CFR 1.129(a) FILED PRIOR TO JUNE 8, 2005

After submission and payment of the fee set forth in 37 CFR 1.17(r), the next Office action on the merits may be made final only under the conditions for making a first action in a continuing application final set forth in MPEP § 706.07(b).

Form paragraph 7.42.03.fti may be used if it is appropriate to make the first action final following a submission under 37 CFR 1.129(a) filed prior to June 8, 2005.

If a subsequent final rejection is made in the application, applicant would be entitled to have a second submission entered and considered on the merits under the same conditions set forth for consideration of the first submission. Form paragraph 7.41.02.fti should be used.

Any submission filed after a final rejection made in the application subsequent to the fee set forth in 37 CFR 1.17(r) having been twice paid will be treated in accordance with the current after-final practice set forth in 37 CFR 1.116.

II. SUBMISSIONS UNDER 37 CFR 1.129(a) FILED ON OR AFTER JUNE 8, 2005

For timely submission and payment of the fee set forth in 37 CFR 1.17(r) on or after June 8, 2005, the next Office action on the merits will be equivalent to the next Office action following a reply to a non-final Office action. Under existing second Office action final practice, such an Office action on the merits will be made final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an IDS filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 706.07(a).

Form paragraph 7.42.031.fti may be used to make the next Office action final following a submission under 37 CFR 1.129(a) filed on or after June 8, 2005.

An applicant whose application is eligible for the transitional further limited examination procedure set forth in 37 CFR 1.129(a) is entitled to consideration of two after final submissions. Thus, if such an applicant has filed one submission under 37 CFR 1.129(a) and the application is again under a final rejection, the applicant is entitled to only one additional submission under 37 CFR 1.129(a). If such an applicant has filed two submissions under 37 CFR 1.129(a) and the application is again under a final rejection, applicant is not entitled to have any additional submissions considered under 37 CFR 1.129(a). Applicant may be entitled to consideration of an additional submission if the submission meets the conditions set forth in 37 CFR 1.116.

706.07(h) Request for Continued Examination (RCE) Practice [R-01.2024]

35 U.S.C. 132(b) provides for continued examination of an application at the request of the applicant (request for continued examination or RCE) upon payment of a fee, without requiring the applicant to file a continuing application under 37 CFR 1.53(b). To implement the RCE practice, 37 CFR 1.114 provides a procedure under which an applicant may obtain continued examination of an application in which prosecution is closed (e.g., the application is under final rejection or a notice of allowance) by filing a submission and paying a specified fee. Applicants cannot file an RCE to obtain continued examination on the basis of claims that are independent and distinct from the claims previously claimed and examined as a matter of right (i.e., applicant cannot switch inventions). See 37 CFR 1.145. Any newly submitted claims that are directed to an invention that is independent and distinct from the invention previously claimed will be withdrawn from consideration and not entered. See subsection VI. below. An RCE is not the filing of a new application. Thus, the Office will not convert an RCE to a new application such as an application filed under 37 CFR 1.53(b) or a continued prosecution application (CPA) under 37 CFR 1.53(d).

I. CONDITIONS FOR FILING AN RCE

The provisions of 37 CFR 1.114 apply to utility or plant applications filed under 35 U.S.C. 111(a) on or after June 8, 1995, or international applications filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE provisions of 37 CFR 1.114 do not apply to:

• (A) a provisional application;
• (B) an application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995;
• (C) an international application filed under 35 U.S.C. 363 before June 8, 1995, or an international application that does not comply with 35 U.S.C. 371;
• (D) an application for a design patent;
• (E) an international design application; or
• (F) a patent under reexamination.

See 37 CFR 1.114(e).

An applicant may obtain continued examination of an application by filing a request for continued examination (see form PTO/SB/30), a submission and the fee set forth in 37 CFR 1.17(e) prior to the earliest of:

• (A) payment of the issue fee (unless a petition under 37 CFR 1.313 is granted);
• (B) abandonment of the application; or
• (C) the filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or the commencement of a civil action (unless the appeal or civil action is terminated).

See 37 CFR 1.114(a). An applicant cannot request continued examination of an application until after prosecution in the application is closed. See 37 CFR 1.114(a). Prosecution in an application is closed if the application is under appeal, or if the last Office action is a final action (37 CFR 1.113), a notice of allowance (37 CFR 1.311), or an action that otherwise closes prosecution in the application (e.g., an Office action under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935)).

For an effective request for continued examination (RCE) to be filed in a 35 U.S.C. 371 national stage application, all required inventor’s oaths or declarations (or substitute statements) must be submitted in the application prior to or with the RCE, notwithstanding 37 CFR 1.495(c)(3) permitting an inventor’s oath or declaration to be postponed until an application is otherwise in condition for allowance. In accordance with 37 CFR 1.114(e), an RCE cannot be filed in an international application that does not comply with 35 U.S.C. 371; 35 U.S.C. 371(c)(4) requires submission of the oath or declaration by the inventor(s) or a substitute statement.

II. SUBMISSION REQUIREMENT

A “submission” as used in 37 CFR 1.114 includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. See 37 CFR 1.114(c). If a reply to an Office action under 35 U.S.C. 132 is outstanding, the submission must meet the reply requirements of 37 CFR 1.111. See 37 CFR 1.114(c). Thus, an applicant may file a submission under 37 CFR 1.114 containing only an information disclosure statement (37 CFR 1.97 and 1.98) in an application subject to a notice of allowance under 35 U.S.C. 151, but not in an application where the last Office action is a final rejection or an Office action under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935), or in an application that is under appeal. A request for a suspension of action, an appeal brief or a reply brief (or related papers) will not be considered a submission under 37 CFR 1.114. See 37 CFR 1.103 and 1.114(d). The submission, however, may consist of the arguments in a previously filed appeal brief or reply brief, or may simply consist of a statement that incorporates by reference the arguments in a previously filed appeal brief or reply brief. In addition, a previously filed amendment after final (whether or not entered) may satisfy this submission requirement.

Arguments submitted after final rejection that were entered by the examiner but not found persuasive may satisfy the submission requirement if such arguments are responsive within the meaning of 37 CFR 1.111 to the Office action. Consideration of whether any submission is responsive within the meaning of 37 CFR 1.111 to the last outstanding Office action is done without factoring in the “final” status of such outstanding Office action. Thus, a reply that might not be acceptable as a reply under 37 CFR 1.113 when the application is under a final rejection may be acceptable as a reply under 37 CFR 1.111.

Status of the Application	The Submission:	For More Information
After Final	Must include a reply under 37 CFR 1.111 to the final rejection (e.g., an amendment filed with the RCE or a previously-filed after final amendment).	See subsections V. and VI.
After Ex Parte Quayle action	Must include a reply to the Ex Parte Quayle action.	See subsection IX.
After allowance	Includes, but not limited to, an IDS, amendment, new arguments, or new evidence.	See subsection IX.
After appeal	Must include a reply under 37 CFR 1.111 to the final rejection (e.g., a statement that incorporates by reference the arguments in a previously filed appeal brief or reply brief).	See subsections X., XI., and XII.

III. INITIAL PROCESSING

An RCE will be initially processed by the Technology Center (TC) assigned the application. Technical support personnel in the TC will verify that:

• (A) the application is a utility or plant application (i.e., not a design application);
• (B) the application was filed on or after June 8, 1995;
• (C) prosecution in the application is closed (e.g., the last Office action is a final rejection, notice of allowance, or an Office action under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935), or the application is under appeal);
• (D) the RCE was filed before the payment of the issue fee or, if not, a petition under 37 CFR 1.313 to withdraw the application from issue was filed and granted;
• (E) the application was pending (i.e., not patented or abandoned) when the RCE was filed;
• (F) the RCE was accompanied by the proper fee(s) including the RCE fee under 37 CFR 1.17(e);
• (G) the RCE included a submission as required by 37 CFR 1.114; and
• (H) if the application is a national stage application under 35 U.S.C. 371, a compliant inventor’s oath or declaration for each inventor was submitted prior to or with the RCE.

An RCE will not be processed if the application is undergoing court review at the Federal Circuit or in federal district court because the application is in the jurisdiction of the court and the RCE procedure is not available. See subsection XII below.

A. Treatment of Improper RCE

If one or more conditions for filing an RCE have not been satisfied, applicant will be so notified. Generally, a “Notice of Improper Request for Continued Examination (RCE),” Form PTO-2051, will be mailed to applicant. An improper RCE will not operate to toll the running of any time period set in the previous Office action for reply to avoid abandonment of the application.

If an examiner discovers that an improper RCE has been forwarded to the examiner in error, the application should be immediately returned to a head supervisory legal instruments examiner (HSLIE) within the TC.

1. Prosecution Is Not Closed

If prosecution in the application is not closed, applicant will be notified of the improper RCE and any amendment/reply will be entered. Thereafter, the application will be forwarded to the examiner for consideration of the amendment/reply under 37 CFR 1.111.

2. Application Is Under Appeal

If the application is under appeal and the RCE was not accompanied by the fee set forth in 37 CFR 1.17(e) and/or a submission as required by 37 CFR 1.114, the application will be forwarded to the examiner for appropriate treatment and applicant will be notified of the improper RCE (See subsection X below).

B. Ambiguous Transmittal Paper

If an applicant files a transmittal paper that is ambiguous as to whether it is a continued prosecution application (CPA) under 37 CFR 1.53(d) or a request for continued examination (RCE) under 37 CFR 1.114 (e.g., contains references to both an RCE and a CPA), and the application is a plant or utility application filed on or after June 8, 1995, the Office will treat the transmittal paper as an RCE under 37 CFR 1.114 since, effective July 14, 2003, CPA practice has been eliminated as to plant and utility applications. If an applicant files a transmittal paper that is ambiguous as to whether it is a CPA or an RCE, and the application is a design application, the Office will treat the transmittal paper as a request for a CPA under 37 CFR 1.53(d) since RCE practice does not apply to design applications. Other papers filed with the transmittal paper (e.g., a preliminary amendment or information disclosure statement) will not be taken into account in determining whether a transmittal paper is a CPA, or an RCE, or ambiguous as to whether it is a CPA or an RCE. If, however, applicant files an unambiguous transmittal paper that is an RCE in a design application, it will be treated as an improper RCE and a “Notice of Improper Request for Continued Examination (RCE),” Form PTO-2051, will be mailed to the applicant. An RCE is not a type of new application filing. Therefore, the Office cannot convert an RCE (whether proper or improper) to a new application such as a CPA under 37 CFR 1.53(d).

C. Treatment of Conditional RCE

If a submission is accompanied by a “conditional” RCE and payment of the RCE fee under 37 CFR 1.17(e) (i.e., an authorization to charge the 37 CFR 1.17(e) fee to a deposit account in the event that the submission would not otherwise be entered), the Office will treat the “conditional” RCE and payment as if an RCE and payment of the fee set forth in 37 CFR 1.17(e) had been filed.

D. Treatment of Proper RCE

If the conditions for filing an RCE have been satisfied, the technical support personnel will process the proper RCE. Any previously filed unentered amendments, and amendments filed with the RCE will normally be entered. Such amendments will be entered in the order in which they were filed in the absence of any specific instructions for entry. For example, if applicant files an amendment after final rejection that is denied entry by the examiner, and applicant subsequently files an RCE with an amendment, but the RCE is silent as to whether or not the previously filed after-final amendment should be entered, then the Office will enter both amendments in the order in which they were filed. If, however, applicant files an amendment after final rejection that is denied entry by the examiner, and applicant subsequently files an RCE with an amendment including specific instructions that the previously filed after-final amendment is not to be entered, then the Office will enter the amendment filed with the RCE but will not enter the after-final amendment. If conflicting amendments have been previously filed, applicant should clarify which amendments should be entered upon filing the RCE (and fee). Applicants are encouraged to file all amendments no later than the filing of the RCE to avoid disapproval of entry under 37 CFR 1.111(b). See MPEP § 714.03(a). If additional time is needed to prepare and file a supplement (e.g., affidavit or declaration containing test data) to the previously filed submission, applicant should consider filing a suspension of action by the Office under 37 CFR 1.103(c) with the RCE. For more details on suspension of action, see MPEP § 709.

After entry of any amendments and processing of the fee(s), the application will be forwarded to the examiner. Applicant does not need to pay a fee for excess claims previously paid for prior to the filing of the RCE. Of course, new claims in excess of the number previously paid for, which are filed with the RCE or thereafter, will require payment of the appropriate fees(s) under 37 CFR 1.16.

IV. IMPROPER CPA TREATED AS RCE

37 CFR 1.53(d)(1) has been amended to provide that CPA practice under 37 CFR 1.53(d) does not apply to utility and plant applications. Effective July 14, 2003, a CPA may only be filed if the prior nonprovisional application is a design application. For more details on filing a CPA, see MPEP § 201.06(d).

In the event that an applicant files a request for a CPA on or after July 14, 2003 of a utility or plant application that was filed on or after June 8, 1995, the Office will automatically treat the improper CPA as an RCE of the prior application (identified in the request for CPA) under 37 CFR 1.114. If the CPA does not satisfy the requirements of 37 CFR 1.114 to be a proper RCE (e.g., lacks a submission under 37 CFR 1.114(c), or is not accompanied by the fee set forth in 37 CFR 1.17(e)), the improper CPA will be treated as an improper RCE, and the time period set in the last Office action (or notice of allowance) will continue to run. If the time period (considering any available extension under 37 CFR 1.136(a)) has expired, the applicant will need to file a petition under 37 CFR 1.137 (with the submission that is required by 37 CFR 1.114 or fee set forth in 37 CFR 1.17(e)) to revive the abandoned application.

Effective July 14, 2003, the Office will not convert an improper CPA into an application under 37 CFR 1.53(b) simply because it is requested by the applicant. The Office will convert an improper CPA into an application under 37 CFR 1.53(b) only if the applicant shows that there are extenuating circumstances that warrant the burdensome process of converting a CPA into an application under 37 CFR 1.53(b) (e.g., restoring the application to pending status and correcting the improper RCE is not possible because the application has issued as a patent).

Form paragraph 7.42.15 should be used by the examiner to inform applicant that a CPA is being treated as an RCE.

V. AFTER FINAL REJECTION

If an applicant timely files an RCE with the fee set forth in 37 CFR 1.17(e) and a submission that meets the reply requirements of 37 CFR 1.111, the Office will withdraw the finality of any Office action to which a reply is outstanding and the submission will be entered and considered. See 37 CFR 1.114(d). The submission meeting the reply requirements of 37 CFR 1.111 must be timely received to continue prosecution of an application. In other words, the mere request for, and payment of the fee for, continued examination will not operate to toll the running of any time period set in the previous Office action for reply to avoid abandonment of the application.

Any submission that is an amendment must comply with the manner of making amendments as set forth in 37 CFR 1.121. See MPEP § 714.03. The amendment must include markings showing the changes relative to the last entered amendment. Even though previously filed unentered amendments after final may satisfy the submission requirement under 37 CFR 1.114(c), applicants are encouraged to file an amendment at the time of filing the RCE that incorporates all of the desired changes, including changes presented in any previously filed unentered after final amendments, accompanied by instructions not to enter the unentered after final amendments. See subsection VI for treatment of not fully responsive submissions including noncompliant amendments.

If the RCE is proper, form paragraph 7.42.04 should be used to notify applicant that the finality of the previous Office action has been withdrawn.

VI. NOT FULLY RESPONSIVE SUBMISSION

If reply to a final Office action is outstanding and the submission is not fully responsive to the final Office action, then it must be a bona fide attempt to provide a complete reply to the final Office action in order for the RCE to toll the period for reply.

If the submission is not a bona fide attempt to provide a complete reply, the RCE should be treated as an improper RCE. Thus, a “Notice of Improper Request for Continued Examination (RCE),” Form PTO-2051, should be prepared by the technical support personnel and mailed to the applicant indicating that the request was not accompanied by a submission complying with the requirements of 37 CFR 1.111 (see 37 CFR 1.114(c)). The RCE will not toll the period for reply and the application will be abandoned after the expiration of the statutory period for reply if no submission complying with 37 CFR 1.111 is filed. For example, if a reply to a final Office action is outstanding and the submission only includes an information disclosure statement (IDS), the submission will not be considered a bona fide attempt to provide a complete reply to the final Office action and the period for reply will not be tolled. Similarly, an amendment that would cancel all of the claims in an application and does not present any new or substitute claims is not a bona fide attempt to advance the application to final action. The Office will not enter such an amendment. See Exxon Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 60 USPQ2d 1368 (Fed. Cir. 2001).

If the submission is a bona fide attempt to provide a complete reply, applicant should be informed that the submission is not fully responsive to the final Office action, along with the reasons why, and given a new shortened statutory period of two months to complete the reply. See 37 CFR 1.135(c). Form paragraph 7.42.08 set forth below should be used.

Situations where a submission is not a fully responsive submission, but is a bona fide attempt to provide a complete reply are:

• (A) Non-compliant amendment - An RCE filed with a submission that is an amendment that is not in compliance with 37 CFR 1.121 but that is a bona fide attempt to provide a complete reply to the last Office action should be treated as a proper RCE and a Notice of Noncompliant Amendment should be mailed to the applicant. Applicant is given a time period of two months from the mailing date of the notice to provide an amendment complying with 37 CFR 1.121. See MPEP § 714.03 for information on the amendment practice under 37 CFR 1.121.
• (B) Presentation of claims for different invention - Applicants cannot file an RCE to obtain continued examination on the basis of claims that are independent and distinct from, or lack unity of invention with, the claims previously elected and examined as a matter of right (i.e., applicant cannot switch inventions). See 37 CFR 1.145. If an RCE is filed with an amendment canceling all claims drawn to the elected invention and presenting only claims drawn to a nonelected invention, the RCE should be treated as a proper RCE but the amendment should not be entered. The amendment is not fully responsive and applicant should be given a time period of two months to submit a complete reply. See MPEP § 821.03. Form paragraphs 8.04 or 8.26 should be used as appropriate.

VII. NEW MATTER

35 U.S.C. 132(a) provides that “[n]o amendment shall introduce new matter into the disclosure of the invention.” Any amendment entered pursuant to 37 CFR 1.114 that is determined to contain new matter should be treated in the same manner that a reply under 37 CFR 1.111 determined to contain new matter is currently treated. See MPEP §§ 608.04 - 608.04(c). In those instances in which an applicant seeks to add new matter to the disclosure of an application, the procedure in 37 CFR 1.114 is not available, and the applicant must file a continuation-in-part application under 37 CFR 1.53(b) containing such new matter.

VIII. FIRST ACTION FINAL AFTER FILING AN RCE

The action immediately subsequent to the filing of an RCE with a submission and fee under 37 CFR 1.114 may be made final only if the conditions set forth in MPEP § 706.07(b) are met.

It would not be proper to make final a first Office action immediately after the filing of an RCE if the first Office action includes a new ground of rejection. See MPEP § 1207.03 for a discussion of what may constitute a new ground of rejection.

Form paragraph 7.42.09 should be used if it is appropriate to make the first action after the filing of the RCE final.

IX. AFTER ALLOWANCE OR QUAYLE ACTION

The phrase “withdraw the finality of any Office action” in 37 CFR 1.114(d) includes the withdrawal of the finality of a final rejection, as well as the closing of prosecution by an Office action under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935), or notice of allowance under 35  U.S.C. 151 (or notice of allowability). Therefore, if an applicant files an RCE with the fee set forth in 37 CFR 1.17(e) and a submission in an application that has been allowed, prosecution will be reopened. If the issue fee has been paid, however, payment of the fee for an RCE and a submission without a petition under 37 CFR 1.313 to withdraw the application from issue will not avoid issuance of the application as a patent. If an RCE (with the fee and a submission) is filed in an allowed application prior to payment of the issue fee, a petition under 37 CFR 1.313 to withdraw the application from issue is not required.

If an RCE complying with the requirements of 37 CFR 1.114 is filed in an allowed application after the issue fee has been paid and a petition under 37 CFR 1.313 is also filed and granted, prosecution will be reopened. Applicant may not obtain a refund of the issue fee. If, however, the application is subsequently allowed, the Notice of Allowance will reflect an issue fee amount that is due that is the difference between the current issue fee amount and the issue fee that was previously paid.

Form paragraph 7.42.05 should be used to notify applicant that prosecution has been reopened.

X. AFTER APPEAL BUT BEFORE DECISION BY THE BOARD

If an applicant files an RCE under 37 CFR 1.114 after the filing of a Notice of Appeal to the Patent Trial and Appeal Board (Board), but prior to a decision on the appeal, it will be treated as a request to withdraw the appeal and to reopen prosecution of the application before the examiner, regardless of whether the RCE is proper or improper. See 37 CFR 1.114(d). The Office will withdraw the appeal upon the filing of an RCE. Applicants should advise the Board when an RCE under 37 CFR 1.114 is filed in an application containing an appeal awaiting decision. Otherwise, the Board may refuse to vacate a decision rendered after the filing (but before the recognition by the Office) of an RCE under 37 CFR 1.114.

A. Proper RCE

If the RCE is accompanied by a fee (37 CFR 1.17(e)) and a submission that includes a reply which is responsive within the meaning of 37 CFR 1.111 to the last outstanding Office action, the Office will withdraw the finality of the last Office action and the submission will be entered and considered. If the submission is not fully responsive to the last outstanding Office action but is considered to be a bona fide attempt to provide a complete reply, applicant will be notified that the submission is not fully responsive, along with the reasons why, and will be given a new time period to complete the reply (using form paragraph 7.42.08). See 37 CFR 1.135(c) and subsection VI.

If the RCE is proper, form paragraph 7.42.06 should be used to notify applicant that the appeal has been withdrawn and prosecution has been reopened.

B. Improper RCE

The appeal will be withdrawn even if the RCE is improper. If an RCE is filed in an application after appeal to the Board but the request does not include the fee required by 37 CFR 1.17(e), or the submission required by 37 CFR 1.114, or both, the examiner should treat the request as an improper RCE and withdraw the appeal pursuant to 37 CFR 1.114(d). If the submission is not considered to be a bona fide attempt to provide a complete reply to the last outstanding Office action (e.g., an IDS only), the submission will be treated as an improper submission or no submission at all under 37 CFR 1.114(c) (thus the request is an improper RCE). See subsection VI.

Upon withdrawal of the appeal, the application will be treated in accordance with MPEP § 1215.01 based on whether there are any allowed claims or not. The proceedings as to the rejected claims are considered terminated. Therefore, if no claim is allowed, the application is abandoned. Claims that are allowable except for their dependency from rejected claims will be treated as if they were rejected. See MPEP § 1215.01. If there is at least one allowed claim, the application should be passed to issue on the allowed claim(s). If there is at least one allowed claim but formal matters are outstanding, applicant should be given a shortened statutory period of two months in which to correct the formal matters. Form paragraphs 7.42.10 - 7.42.14 should be used as appropriate.

XI. AFTER DECISION BY THE BOARD

A. Proper RCE After Board Decision

The filing of an RCE (accompanied by the fee and a submission) after a decision by the Patent Trial and Appeal Board (Board), but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit (Federal Circuit) or the commencement of a civil action in federal district court, will also result in the finality of the rejection or action being withdrawn and the submission being considered. The time period for filing a notice of appeal to the Federal Circuit or for commencing a civil action ends sixty-three (63) days after the date of the final Board decision. See 37 CFR 90.3 and MPEP § 1216. Thus, an RCE filed within this sixty-three day time period and before the filing of a notice of appeal to the Federal Circuit or the commencement of a civil action would be timely filed. An RCE may also be timely filed during the time period set in 37 CFR 41.50(b) where a new ground of rejection was made by the Board or during the time period after a request for rehearing under 37 CFR 41.52 has been filed and before decision on the request. In addition to the res judicata effect of a Board decision in an application (see MPEP § 2190, subsection II), a Board decision in an application is the “law of the case,” and is thus controlling in that application and any subsequent, related application. See MPEP § 1214.01 (where a new ground of rejection is entered by the Board pursuant to 37 CFR 41.50(b), argument without either amendment of the claims so rejected or the submission of a showing of facts can result only in a final rejection of the claims, since the examiner is without authority to allow the claims unless amended or unless the rejection is overcome by a showing of facts not before the Board). As such, a submission containing arguments without either amendment of the rejected claims or the submission of a showing of facts will not be effective to remove such new grounds of rejection or any other rejection affirmed in such decision.

Form paragraph 7.42.07 should be used to notify applicant that the appeal has been withdrawn and prosecution has been reopened.

B. Improper RCE After Board Decision

If an RCE is filed after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Federal Circuit or the commencement of a civil action in federal district court, and the RCE was not accompanied by the fee and/or the submission, the examiner should notify the applicant that the RCE is improper by using form paragraph 7.42.16 set forth below. If the time for seeking court review has passed without such review being sought, the examiner should include the form paragraph with the mailing of a Notice of Allowability or a Notice of Abandonment depending on the status of the claims. See MPEP § 1214.06. If the time for seeking court review remains, the examiner should include the form paragraph on a PTOL-90. No time period should be set. If a submission is filed with the RCE, but the fee is missing, the examiner should also include a statement as to whether or not the submission has been entered. In general, such a submission should not be entered. If, however, the submission is an amendment that obviously places the application in condition for allowance, it should be entered with the approval of the supervisory patent examiner. See MPEP § 1214.07. Form paragraph 7.42.16 should not be used if the application is not a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. In that situation, a “Notice of Improper Request for Continued Examination (RCE),” Form PTO-2051, should be prepared and mailed by the technical support personnel to notify applicant that continued examination does not apply to the application. When the time for seeking court review has passed without such review being sought, the examiner must take up the application for consideration. See MPEP § 1214.06 for guidance on the action to be taken.

XII. AFTER APPEAL TO THE FEDERAL CIRCUIT OR CIVIL ACTION

The procedure set forth in 37 CFR 1.114 is not available in an application after the filing of a Notice of Appeal to the Federal Circuit or the commencement of a civil action in federal district court, unless the appeal or civil action is terminated and the application is still pending. If an RCE is filed in an application that has undergone court review, the examiner should bring the application to the attention of the supervisory patent examiner or a quality assurance specialist in the TC to determine whether the RCE is proper. Unless an application contains allowed claims (or the court’s mandate clearly indicates that further action is to be taken by the Office), the termination of an unsuccessful appeal or civil action results in abandonment of the application. See MPEP § 1216.01.

XIII. FORMS

Form PTO/SB/30, “Request for Continued Examination (RCE) Transmittal,” may be used by applicant for filing an RCE under 37 CFR 1.114. The form used by the Technology Centers to notify applicant of an improper RCE, “Notice of Improper Request for Continued Examination (RCE),” form PTO-2051, is shown below following form PTO/SB/30.