On June 20, 2020, the USPTO updated MPEP 706.07(b), the rule by which USPTO examiners are to adhere in issuing a first Office final rejection of the claims in a new patent application. MPEP 796.07(b) presently provides that the claims of a new patent application can be finally rejected if: “(A) the new application is a continuing application of, or a substitute for, an earlier application, and (B) all claims of the new application (1) are identical to or patentably indistinct from the claims in the earlier application . . . and (2) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application.” A commensurate change was concurrently made to the second paragraph of MPEP 706.07(b), which applies in the context of an RCE filed under 37 CFR 1.114.
Formerly, in relevant part, issuance of first Office action final rejection was only proper in a continuation or an RCE if all claims at issue were “drawn to the same invention claimed in the earlier application.” Hence, a mere lack of a patentable distinction between the claimed inventions would not warrant such a final rejection. By broadening the language of MPEP 706.07(b) to allow a first Office action final rejection on such a basis, the USPTO provided examiners with considerably more discretion in finally rejecting claims in a first Office action in a continuation or an RCE.
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