MPEP Q & A 229: When are the claims of a new application finally rejected in the first Office action?

mpep-podcast-800

Question:

When may the claims of a new application be finally rejected in the first Office action?

Answer:

The claims of a new application may be finally rejected in the first Office action in those situations where:

  • (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 either identical to or patentably indistinct from the claims in the earlier application (in other words, restriction 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.

Chapter Details:

The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of Applications.

The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 706.07(b) of the MPEP.  The following is a brief summary of section 706.07(b).

706.07(b)   Final Rejection, When Proper on First Action

This section covers situations when a final rejection is proper on a first action. Both the times when a final rejection on the first action are proper and improper are discussed.