Consider the situation where you want to respond back to a final office action but do not want to submit substantial amendments to the claims. While practitioners generally expect the issuance of a non-final office action after a Request to Continue Examination (RCE), section 706.07(b) of the MPEP states that can examiner can issue a final office action rejection after an RCE when the claims:
(A) are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114, and
(B) 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 application prior to the filing of the RCE under 37 CFR 1.114.
To avoid triggering of this exception to the general after-final RCE practice rule receiving a non-final office action, the claim set needs to be amended substantively. Here are a few options that can be implemented:
Amend an independent claim with subject matter that cannot be reasonably interpreted from existing prior art cited by the examiner. This is the safest approach since the application remains “drawn to the same invention,” satisfying prong (A), and the amendments would assure that the examiner needs to perform a new search and not state that the claims would have been rejected on the previously cited grounds and art.
There are times when applicant does not want to amend the claim-set and would rather argue that the examiner is wrong. But at the same time the practitioner is not comfortable appealing the matter (for one of countless reasons that may exist). For example, one reason could be that the applicant wants to re-try convincing the examiner’s analysis is faulty, prior to appealing the matter. In such a case the practitioner may not want to narrow the claim-set by amending it further. In such a case, to avoid the 706.07(b) final after RCE exception from triggering, the practitioner may create a new independent claim using the subject matter already disclosed, prior to implementing the strategy of option 1. Thus, the new independent claim using subject matter of the disclosed claim set that is further sufficiently narrowed would satisfy the two prongs of the rule.
The advantage of option 2 is that it leaves the current claim-set ‘as-is’ and at the same time prevents the section 706.07(b) final after RCE exception from triggering.
A Word of Caution
Often times, practitioners implement option 2 but do not narrow the claim sufficiently. Thereafter, they receive a section 706.7(b) based final rejection after an RCE and attempt to “discuss” (read argue) the matter with the examiner and their supervisor. In my experience, convincing the examiner and their supervisor on a procedural aspect is very difficult and as long as the examiner is able to show that the previously cited art disclosed the newly submitted claim, the final is considered proper. For example, arguing that the examiner cited another reference only to justify that the previously cited reference disclosed the limitation will not help the applicant’s case. The examiner is most likely going to prevail in such instances.