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For an example scenario you get a rejection on your only claim, claim 1. It is rejected under 103 and the examiner cites paragraph [0010] of reference A and the abstract of reference B.

Although paragraph [0010] of reference A objectively does not teach or suggest the claim feature the Examiner says it does. In responding to the non-final you point this out and state the Examiner hasn't provided articulated reasoning, etc.

Then you get rejected again over the same references A and B, however this time the Examiner properly did his job and it turns out reference A does teach that claim feature but it was in paragraph [0204]. Can the Examiner properly make this rejection final?

I was taught some years ago that they can because there is some presumption that when an Examiner cites a reference they cite it in its entirety and the burden falls on the applicant to rebut the reference in its entirety (even if the Examiner cites specific portions to reject specific claim language).

But it seems to me that an Examiner that cites incorrect portions for specific claim language has failed to make a proper rejection and therefore cannot make that rejection final.

  • This sort of stuff is exactly why you need a patent lawyer. – Eric Shain Mar 15 '17 at 14:32
  • I am a patent lawyer in training, third year of law school, passed patent bar. – projectgonewrong Mar 15 '17 at 14:33
  • Ok, perhaps one of the lawyers who frequent the site will answer. – Eric Shain Mar 15 '17 at 14:35
  • I think the examiner's explanation is to be seen more like a hint. If you appeal a rejection that is based on a bad explanation for a good prior art, you are likely to lose that. I guess what's to be learned here is to (almost) always read the document and pretend the examiner found everything. Trying to get the final rejection made non final is probably not worth it (I don't know if it's possible), but if you do and succeed, I'd be very interested in seeing that case ;). – DonQuiKong Mar 15 '17 at 15:58
  • This wasn't a real case, I was just working on writing a cookie cutter argument to try and preclude a final from being issued. Currently I do the method of reading the whole reference, just thought about time saving if I could force the examiner to find it without wasting a non-final – projectgonewrong Mar 15 '17 at 16:01
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I don't have a definitive answer to this, as I've never had occasion to argue it. I hope someone else comes along with a better answer, because it is an interesting point.

The MPEP does provides some limited reasoning on this.

MPEP § 706.07(a) provides:

Second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims, nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).

The meaning of a new ground of rejection is described at MPEP § 1207.03(a)(II):

If the examiner’s answer cites a different portion of an applied reference which goes no farther than, and merely elaborates upon, what is taught in the previously cited portion of that reference, then the rejection does not constitute a new ground of rejection. …

The argument for the examiner would therefore seem to be that although the portions of the cited references have changed, these broadened portions merely elaborate on the previous ones, and therefore there is no new ground of rejection.

But what if the previous rejection was not properly explained?

It doesn't seem to matter for whether a rejection is made final. MPEP § 2141(IV) provides:

A mere statement or argument that the Office has not established a prima facie case of obviousness or that the Office’s reliance on common knowledge is unsupported by documentary evidence will not be considered substantively adequate to rebut the rejection or an effective traverse of the rejection under 37 CFR 1.111(b). Office personnel addressing this situation may repeat the rejection made in the prior Office action and make the next Office action final.

Thus if your argument is merely confined to the insufficiency of the reasoning in the rejection (rather than the insufficiency of the teaching of the references), you would not be properly rebutting the rejection.

This seems to align well with the aim of the Office to encourage procedural efficiency. That is, if you're replying based on formal deficiencies rather than substantive matters, you're essentially delaying prosecution, and so should not be encouraged.

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  • "which goes no farther than, and merely elaborates upon, what is taught in the previously cited portion of that" This seems to be the relavant part. But can one even appeal against the type of rejection? – DonQuiKong Mar 16 '17 at 14:07

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