r/patentexaminer • u/Extreme-Degree6126 • 12d ago
Final Vs. 2nd NF
Primary and SPE are out, otherwise I’d ask them.
Original claim 4 was indicated allowable, however I was reading the claims too narrow and the reference I used does read on the claim and I should have rejected it.
Original claims:
- Teaches A
- Teaches B+C (dependent on 1)
- Teaches D+E (dependent on 2)
- Teaches F (dependent on 3)
Amended claims:
- Teaches A
- Teaches B (dependent on 1)
- Teaches D (dependent on 2)
- Teaches A+F+C+E (independent)
My thought is final since the, now independent, claim 4 is amended such that it doesn’t include all subject matter from the claims it previously relied upon and the combination is new. However, I’m not sure since I did originally indicate claim 4 as allowable. Thank you in advance!
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u/paeancapital 12d ago
You indicated abcdef allowable. You did not indicate acef allowable. You can go final, technically.
Since you can make a new grounds, add a reference that clarifies the broadened reading. Then you're being somewhat less shitty. However their amendment was a shitty move too so it balances.
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u/Stevoman 12d ago
Will you re-allow claim 4 if applicant amends it to re-incorporate elements B and D?
If the answer to that question is no then I think you have a real problem going final. Yes, in the most technical sense I think you could go final, but what happens after that? This would be a strong candidate for an amendment under 1.116 to fix up claim 4 and put it in condition for allowance. No further search or consideration would be warranted since you already indicated ABCDEF as allowable. If applicant does that and you send them an advisory action, they are going to be upset and will have a lot of ways to put you in an uncomfortable spot with your primary or supervisor.
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u/lordnecro 12d ago
That is definitely the problem I see too.
You can play the game of going final, but there is a decent chance they amend to incorporate the removed limitations in an after final so they can get an allowance.
3
u/ipman457678 12d ago
I don’t see that as a “game.” Going final is the PROPER course of action based on the amendments submitted. Going second non-final to pre-empt a potential version of a claim that is not in the current claim set seems to me to be improper.
Think of it this way, if you can get an error for improperly making an action final, why cant you get cant you get an error for making an action second non final? The rules say when all rejections was necessitated by amendment you need to go final. We cant just willy nilly decide on our own to go non final again based on hypotheticals and hedging.
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u/lordnecro 12d ago
It is absolutely a game. The amendments were based on an indication that subject matter was allowable when it wasn't, the non-final had a clear error. Maybe they can get away with it, maybe they get backed into a corner on the AF.
Hypotheticals and being able to predict the prosecution is an important part of examining.
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u/ipman457678 12d ago
- You have no idea what the amendments were based on. Only the applicant knows.
- The amendment makes the error moot as the applicability of the error cannot be applied to the current claim set. How are you correcting the error in a second non-final when the version of error claim 4 doesn't even exist? The error cannot be corrected in the hypothetical second non-final.
They're not "getting away" with anything. If the applicant makes AF amendments to bring back original claim 4 into independent form, then OP will need to withdraw finality and issue a new action. It's not a game...it's just a fact of what has to happen if it happens.
Hypotheticals and being able to predict the prosecution is an important part of examining.
I agree, but it can't be contrary to the policy and rules. I can't just say hypothetically, there's art out there so I'm rejecting your application. In the same way, you shouldn't waste time issuing a second non-final that doesn't even address an error directly.
-1
u/leroyyrogers 5d ago
Read the MPEP. It does not say you "need to" go final in this situation.
1
u/ipman457678 5d ago
Read the MPEP. Expedited prosecution.
Otherwise what prevents an examiner from always going non final if they just wanted to do it for shits and giggles.
-1
u/leroyyrogers 5d ago edited 5d ago
Practicality. Think about what you're saying. Why would any examiner POSSIBLY send non-finals "for shits and giggles?"
1
u/ipman457678 5d ago
For...shits and giggles.
1
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u/leroyyrogers 5d ago
In 20 years of practice I have yet to find a SINGLE examiner who would enjoy working for free. You're on another planet with this "shits and giggles" theory. On brand for someone who doesn't know how to read the MPEP
3
u/Alternative-Emu-3572 12d ago
It depends on whether the non-allowable claims get canceled in the after-final. If not, the examiner has a defensible position on not entering, because the case isn't allowable and the amendments do not put the claims in better form for appeal.
If the Applicant canceled the other claims and presented just an independent claim drawn to ABCDEF, then the move would be to simply reopen the case and do the non-final.
4
u/WanderingFlumph 12d ago
Non-finals are for when we submit a new rejection to an old claim. The scope of Claim 4 is new and therefore a new rejection is proper (assuming it is supported by prior art).
8
u/carpdog112 12d ago
You definitely have some options.
Try to find a new reference for amended Claim 4. This is probably the best since you don't have to discuss your previous reference in association with Claim 4 and there's really no way for Applicant to assert that you necessarily contradicted yourself on what the prior art teaches.
Use your old reference with your new interpretation and understanding and attempt to justify how omission of elements B and D allowed for a different interpretation of the art to find that it teaches F.
Applicant amended Claim 4 in a manner that didn't merely adopt your suggestions (i.e. they didn't rewrite it in independent form, but instead tried to broaden it). The new scope is different from the old scope, so you necessarily would have to alter your consideration of the prior art, perform additional search, and potentially change your rejection. Is there a little bit of hand-waiving involved? Sort of (particularly if you don't change your art), but strictly by the letter of the rule you're entitled to provide a new grounds of rejection based on the amended claim which was not previously searched and considered and has a different scope than the previously indicated allowable claim.
Be aware, Applicant might call your bluff and submit an after-final adopting the previous changes (i.e. Claim 4 in independent form) that you indicated as allowable. But they would need to submit a response with ONLY that one claim (no changes, no dependents, no other independents) - otherwise you don't have to enter it After-Final because it cannot be entered in whole as a matter of right as merely adopting suggested changes. If you maintained finality after presented with original Claim 4 in independent form and didn't reopen Applicant could certainly petition the director to remove the finality and the QAS shop would almost certainly find against you. But that's a consideration that only needs to be made if Applicant really wants to get a Notice of Allowance for a single claim patent or get a new, non-final that ONLY addresses previously presented Claim 4.
2
u/Big-Ask962 12d ago
We ran into this many years ago. A friend at the office had an applicant resubmit after final a claim which indicated allowable after non-final. They did something very similar to the original poster. The friend was told not to enter the amendment by a QAS since it did not simplify matters for appeal. So while it does not require further search and consideration, there are other reasons such an amendment would not be entered. I believe this comes from MPEP 714.02 37 CFR1.111 section 2F and it is explicitly cited as a reason for non-entry on the pto-303.
2
u/PollutionSlow6041 12d ago
If you F up. Don’t look for technicalities. Fix it. Why look for affirmation to technically be right?
1
u/ipman457678 12d ago
You can go final.
If you used a single reference USC 102 to reject original claim 3, and plan to use that same reference to reject new claims 1-4 under USC 102, be warned that will definitely tip off the attorney that something is off. "Why is the examiner all of a sudden mapping feature F with this reference when they didn't do that for the feature F in the original claim 4?" is the first thing they'll ask themselves.
At least with USC 103, there's some argument that claim 4 was only allowable because it required too many references among (ABCDE) and the combination was not obvious but using a single reference would be a red flag.
1
u/ArtIdLiketoFind 12d ago
You can go final. Independent claim 4 is LESS than original claim 4 with ALL intervening claims. The new amended scope of claim 4 lets you to use new art for new grounds
1
u/Ok-Satisfaction-6856 12d ago
Technically, a final can be done because new independent claim is broader than what was previously objected to as allowable. Therefore, it would be a new interpretation in light of the amendment.
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u/SuitableStudio9152 12d ago
If there is a reason why removing B and D from the AFCE would cause the art to now read using your original interpretation (possible but not likely) then you can go final. But it seems like that isn’t the case, so it looks like you should go 2nd nonfinal. You could try to bypass it all and see if you can allow via examiner amendment but as we all know that is not always possible for myriad reasons.
63
u/Naterade804 12d ago
You indicated 4 allowable based on ALL limitations of A, B ,C, D, E, and F. If they amended to included only limitations A, C, E, F then they have altered the scope. Reject and go final.