The Examiner's Final Rejection and the After-Final Tightrope
After a first action non-final rejection under 102(a)(1) and 103, the applicant filed a response amending claim 1 to add a limitation taken verbatim from paragraph [0042] of the specification. The examiner issues a final rejection, asserting the new limitation is not supported by the specification and that the prior art still teaches the remainder. The applicant disputes the support finding, pointing to paragraph [0042]'s exact language. The applicant has 3 months remaining in the shortened statutory period and wants to keep prosecution open without paying an extension fee. The applicant also has a second independent claim that the examiner allowed. The applicant asks about filing a request for continued examination (RCE), an after-final response, and an appeal.
1. Is the examiner's final rejection proper, and what options does the applicant have to keep prosecution open without an extension fee?
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A final rejection is proper if the applicant's amendment necessitated a new search or further analysis, or if the rejection is a proper repeat (MPEP 706.07(a)). Here, the examiner's new written description rejection of the added limitation is a new ground, which generally should be non-final unless it is a direct consequence of the amendment and raises no new issue. The applicant should first consider an after-final response under 37 C.F.R. 1.116: it may include arguments and, if it places the application in condition for allowance, an amendment. But a new ground rejection may be better addressed by an RCE (37 C.F.R. 1.114), which reopens prosecution and resets the non-final clock - though it costs a fee and does not extend the 3-month period for the RCE itself.
Without an extension fee, the applicant must act within the 3 months. The safest path: file an after-final response arguing the support issue, and if the examiner maintains the rejection, file an RCE before the period expires. Note that an RCE does not require the examiner to withdraw the finality; it simply reopens prosecution.
2. How should the applicant argue that paragraph [0042] supports the added limitation?
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The test is whether the specification reasonably conveys possession of the claimed subject matter to a skilled artisan (Ariad; MPEP 2163). The applicant should quote the exact language of [0042] and explain how it describes the limitation, not merely that the words appear. If [0042] uses different terminology, the applicant must show the terms are equivalent in the art or that the limitation is inherent.
Avoid relying on the claim itself as support; the specification must provide the disclosure. If [0042] is ambiguous, the applicant may point to other paragraphs that, together with [0042], describe the feature. If support truly fails, the applicant should withdraw the limitation rather than risk a new-matter rejection under 132(a), which cannot be cured by amendment.
3. What are the consequences of appealing versus filing an RCE, given the allowed second independent claim?
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If the applicant appeals, the allowed claim remains in the application but is not patented until the appeal resolves; the applicant cannot obtain a patent on the allowed claim alone while the rejected claim is on appeal (unless the applicant cancels the rejected claim). An appeal (37 C.F.R. 41.31) requires a notice of appeal and an appeal brief, with fees, and the examiner may file an examiner's answer.
An RCE keeps the application pending and allows the examiner to reconsider with a new search, but the applicant loses the ability to appeal the final rejection until a new final rejection issues. Given the allowed claim, the applicant might consider canceling the disputed claim to secure a patent on the allowed claim, then pursue the disputed subject matter in a continuation. That preserves the earlier filing date and avoids the appeal/RCE cost. The choice depends on the commercial value of the disputed limitation.