Improper Final Rejections

Patent prosecution before the USPTO is governed by numerous rules that limit an Applicant's ability to take certain actions, such as amending the claims.  In response to a Non-Final Rejection, an Applicant is allowed to amend the claims to add clarifications, distinguish prior art, etc.  The Examiner must then consider these amendments on the next action.  However, once a Final Rejection is issued, the Applicant's options are significantly restricted, particularly with regard to further amendments.  While an Applicant can regain more freedom to amend by filing an RCE (request for continued examination), a significant fee is required. Therefore, sometimes there are disputes as to whether an action should or should not be a Final Rejection.  

Here I look at an example where even when the Applicant has correctly petitioned the Finality of the rejection as being premature, the USPTO addresses the situation in a way that some might argue is quite unfair to the Applicant.  But first, consider a case that was handled fairly by the USPTO.

Serial No. 13/366,700 is an application for an Unmanned Aircraft with Built-in Collision Warning System.  The Examiner first issued a Non-Final Rejection, rejecting claim 5, among other claims, based on obviousness in view of a prior art reference.  The Applicant filed a response without amendment to claim 5.  The Examiner then issued a Final Rejection adding an additional reference to reject claim 5.  Clearly, the Examiner realized a deficiency in the rejection and modified the rejection in an attempt to improve it.  However, the applicable rule is that if even one claim is unamended, the Examiner cannot supplement the rejection and make the next rejection final.  This rule makes sense because it would be unfair to punish an Applicant who merely pointed out an error in the rejection, only to be stuck with a Final Rejection on the next action.  Here, the Office of Petitions correctly found that the Final Rejection was premature since claim 5 was not amended, and thus ordered the Examiner to re-mail the action as Non-Final.  This last step is critical, because the re-mailing of the action resets the dates and allows the Applicant their statutorily allotted time to respond to the new rejection.  

Serial No. 13/908,604, however, shows a different approach taken by the Office.  This application relates to a Diagnostic Assistance where the Examiner added a new Section 101 (Alice) rejection of all of the claims for the first time the Final Rejection.  The Applicant successfully argued that this new rejection had nothing to do with the claim amendments.  However, unlike the first example above where the Office directed the Examiner to re-mail the action as a Non-Final Rejection, the Office here indicates that the original mailing date of the action stands.  The only change ordered by the Office of Petitions is that the status of the rejection was to be changed to a Non-final Rejection.  While this may seem reasonable at first (as the only problem with the rejection was the label), the implications to the Applicant are significant.  As the original rejection was mailed September 5, 2014, the deadline to respond to the action without fees was December 5, 2014.  The petition decision was not mailed until October 28, 2014.  Thus, the Applicant was given a significantly shorter time (less than half of what usually is provided) to develop and prepare their response to the rejection. It is not clear to me how the Office can justify this approach. 

Fortunately, the Applicant prosecuting Serial No. 13/908,604 knew that the Office of Petitions often participates in sharp dealing.  Here, the Applicant had already prepared and filed their response to the Office action with the presumption that their petition would be successful.  This seems like an onerous burden to place on the Applicant, but I often follow precisely this approach, as the Office routinely fails to reset the deadlines for response.  While the petition against finality must be filed within two months of the allegedly improper Final rejection, the Office often does not provide a decision until after the expatriation of the 3-month deadline.  As such, if the Applicant simply waits for the decision hoping for the Office to require the Examiner to re-mail the action (as in the first example above), the Applicant can be put in a situation where they won the petition, but still have to pay extension fees and must scramble to quickly file their response.  That's a hard one to explain to the client.  Therefore, my recommendation is that when you petition an improper final, you have to proceed with the assumption that your argument will be successful and proceed to file your desired response (with claim amendments) at least by the three-month deadline.