Chapter 700

Examination of Applications

Chapter 700 is one of the most tested chapters covering examination procedures, final rejection practice, after-final amendments, RCE, and special docket status. The exam constantly tests when a final rejection is proper, what applicants can do after final, and RCE vs continuation.

Core Concepts

MPEP 706 — Examination Practice A second Office Action may be made FINAL if: rejection was necessitated by applicant amendment, OR claims not patentably distinct from previously rejected claims. If new ground unrelated to amendment — final usually IMPROPER. An IDS alone does not make a final rejection proper unless the cited art independently necessitates a new rejection.

Final Rejection — MPEP 706.07 Proper only after first action on merits. Final PROPER when: applicant amendment necessitated the new rejection. Final IMPROPER when: new rejection unrelated to applicant amendment, restriction withdrawn and entirely new art applied, or new search unnecessarily late.

Final Rejection Improper — MPEP 706.07(c) The amendment must necessitate the new ground of rejection — this exact phrase is heavily tested. If applicant amendment does NOT necessitate the new rejection, examiner should NOT make action final. IDS citation alone does not make final proper.

After-Final Amendments — MPEP 714.12 / 37 CFR 1.116 Applicant has NO right to amend after final. After-final amendments NOT entered as matter of right. MUST be entered if: places app in condition for allowance, adopts examiner suggestions, cancels claims, complies with formal requirements. Otherwise: DISCRETIONARY.

RCE — 37 CFR 1.114 Available ONLY for: utility, plant, continuation applications. NOT available for: issued patents, provisionals, reissue, design applications. Requirements: prosecution closed + fee + submission (amendment OR IDS OR argument OR evidence). RCE = same application continues. Continuation = NEW application.

Interviews After Final — MPEP 713.09 Allowed but examiner discretion increases. Should focus on placing app in condition for allowance. Examiner may refuse if no useful purpose.

Special Docket — MPEP 708.02 Age 65+ (NO fee required), health (physician statement required), PPH, environmental, energy, accelerated examination. Special status advances examination only — does NOT guarantee allowance.

Key Rules

1.Final rejection proper only if applicant amendment NECESSITATED the new rejection

2.IDS alone does not make final proper unless cited art necessitates a new rejection

3.After-final amendments NOT entered as matter of right — only allowance-condition amendments must be entered

4.RCE available for utility/plant only — NOT for design, reissue, or provisional

5.RCE continues same application; continuation creates a new application

6.Age 65+ petition to make special requires no fee

7.Interview after final is discretionary — examiner may refuse

8.Special status advances examination only — does not guarantee allowance

EXAM TIP

The key to final rejection questions: ask whether the applicant's amendment NECESSITATED the new rejection. If examiner found new art unrelated to what applicant changed, the final is improper. IDS citation alone is not enough. RCE continues the SAME application; a continuation is a NEW application — this distinction affects priority dates.

Common Traps

1.Thinking applicant has right to amend after final — no right under 37 CFR 1.116

2.Assuming any second Office Action can be made final — must satisfy 706.07 requirements

3.Thinking IDS filing automatically makes a subsequent final proper — must be necessitated

4.Confusing RCE with continuation — RCE continues same application, continuation is a new filing

5.Thinking examiner must grant interview after final — interviews are discretionary

Search Terms

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Sections

701Statutory Authority for Examination

702Requisites of the Application

704Search and Requirements for Information

705Patentability Reports

706Rejection of Claims

High Yield

707Examiner’s Letter or Action

708Order of Examination

709Suspension of Action

High Yield

710Period for Reply

711Abandonment of Patent Application

High Yield

713Interviews

High Yield

714Amendments, Applicant’s Action

715Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a)

High Yield

716Affidavits or Declarations Under 37 CFR 1.132 and Other Evidence Traversing Rejections

717Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2)

718Affidavit or Declaration to Disqualify Commonly Owned Patent as Prior Art, 37 CFR 1.131(c)

719File Wrapper

720Public Use Proceedings

724Trade Secret, Proprietary, and Protective Order Materials