Petitioning Improper Final Rejections

During patent prosecution, receiving a final rejection means that the applicant must appeal or pay for more examination (RCE). The fees associated with either option are not cheap. So, making sure the final is “proper” can be an important issue. As discussed in previous posts, here and here, new grounds of rejection are OK if they were necessitated by the applicant’s amendments, for example. The question becomes murky when there were no amendments, but the examiner “expands” on their reasons for maintaining the rejection. Sometimes the applicant is blindsided by a new interpretation of the claims, or a new interpretation of the references, for example.

The MPEP discusses examples of what constitutes a new ground of rejection in 1207.03(a) (in the context of an Examiner’s Answer). There is not a new ground of rejection “when the basic thrust of the rejection remains the same such that an appellant has been given a fair opportunity to react to the rejection.” Obviously this creates the situation where an examiner believes that the “new” rejection is not really new and makes the rejection final.

As discussed in previous posts, the applicant can petition for review of the examiner’s decision if they believe that the final rejection is improper. But, there are several “gotchas” one must consider. First, the petition does not toll the deadline. Second, even if the applicant wins the petition, the Office generally will NOT reset the deadlines, but will simply re-label the final rejection as non-final. So if it takes a long time to get the petition decision, the applicant is in a catch-22.

Nevertheless, it can be strategically beneficial to attack improper final rejections through petition in the right situations. One of the most difficult areas to attack, though, is when the argument is about whether the examiner’s “supplementing” of a rejection is a new ground of rejection when no new references are cited. One example is illustrated in SN 14/411,923. There, the applicant asserted that the examiner changed the rationale of the rejections based on a particular reference (US 2008/0028512). In particular, in the final rejection, the examiner provided a newly annotated citation to one of the figures in the reference citing to a different structural feature of the reference. The Office denied the petition because, while the examiner may have provided some additional details, the basic thrust could be understood if one reviewed the additional rejections (in dependent claims) and synthesized them together. While this may seem somewhat dubious, it is not uncommon. Thus, it seems quite difficult to win a petition on the ground that the examiner changed the thrust of the rejection when no new references are cited.

It should be noted that if the initial petition is denied, the applicant still has another chance of review by re-filing the petition and requesting review by the Director (which decision is decided by the Deputy Commissioner for Patent Examination Policy). The applicant tried that approach here but, as could be expected, was unsuccessful. Read the decision by the Deputy Commissioner here: decision.

So - be on the lookout for improper finals, but generally petition only under clear violations (e.g., citation to a new reference when no claim amendments were made).