“Forever and Ever, Amend”

It’s almost that time; when eager-faced young examiners will fire up edan, and notice a curious number in the tab marked “Amended.” One.

After months of putting out Office Actions, soon all good little examiners will be receiving the dubious honor of their first responses from attorneys. It’s probably still a month or more away, but eventually the responses will come.

Hopefully, we’ll have paid attention to compact prosecution practice, and the responses from attorneys will either put the cases in condition for allowance or applicants will abandon their applications once faced with the awesome might that was our Application of Prior Art.

Honestly, though, we’ll probably be doing a lot of second action non-finals. Because we’re new, we don’t know our arts especially well, and we don’t have the instincts to know which art to apply when.

Today’s lecture was about what we should expect to see in responses to our office actions. Who we should expect those responses from, what they should address, and how we should respond in kind. Specifically, it is very important to determine when we can legitimately “go final,” and when we ought to go non-final in our actions.

For those who aren’t familiar with the process, the Office sends out a first office action on the merits of any particular case. Sometimes it’s a first action allowance, sometimes a non-final rejection. If we sent out a rejection, applicant or applicant’s representative needs to respond to our rejections with arguments or amendments. Examiners must, in turn, respond to those arguments or amendments. If an examiner changes the grounds for rejection (in the first action, the examiner used one piece of prior art, and in the response she uses a second), and that change was not in direct response to applicant’s amendment of a claim, the examiner must not issue a final rejection.

If, however, the examiner must apply new art to meet the claims as amended, the examiner may be able to go final. Making the wrong decision could be unfortunate for the examiner, since if applicant wins an appeal of the examiner’s decision, the examiner will have to start working on the application from scratch – without getting credit.

Since I know this will be a touchy subject for some people out there, let me be very clear that I have presented a mere fraction of the subject matter covered during the lecture today, and as always, my comments are a simplification of some of the important points. The determination of when an examiner’s office action should be final or non-final must be treated on a case by case basis, and those of us still learning must consult with our trainers or supervisors before making any determination in that regard.


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