Q) Final Office Action (10.01.11a)

by patentbar on September 4, 2008 · 3 comments

in Exam Questions

11. In which of the following final Office action rejections is the finality of the Office action
rejection proper?
(A) The final Office action rejection is in a second Office action and uses newly cited
art under 35 U.S.C. § 102(b) to reject unamended claims that were objected to but
not rejected in a first Office action.
(B) The final Office action rejection is in a first Office action in a continuation- in-part
application where at least one claim includes subject matter not present in the
parent application.
(C) The final Office action rejection is in a first Office action in a continuing
application, all claims are drawn to the same inve ntion claimed in the parent
application, and the claims 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
parent application.
(D) The final Office action rejection is in a first Office action in a substitute
application that contains material that was presented after final rejection in an
earlier application but was denied entry because the issue of new matter was
raised.
(E) None of the above.

11. ANSWER: (C) is the correct answer. MPEP § 706.07(b). (A) is incorrect because a final
rejection is not proper on a second action if it includes a rejection on newly cited art other than
information submitted in an information disclo sure statement under 37 CFR 1.97(c). MPEP
§ 706.07(a). (B) is incorrect because it is improper to make final a first Office action in a
continuation- in-part application where any claim includes subject matter not present in the parent
application. MPEP § 706.07(b). (D) is incorrect because it is improper to make final a first
Office action in a substitute application where that application contains material, which was
presented in the earlier application after final rejection, or closing of prosecution but was denied
entry because the issue of new matter was raised. MPEP § 706.07(b). (E) is incorrect because
(C) is correct.

{ 3 comments… read them below or add one }

1 chemEgirlNo Gravatar August 2, 2012 at 6:49 am

i understand why C is correct but can anyone explain to me why A is wrong exactly?

“new grounds of rejection on objected (but not rejected) unamended claims….”

Reply

2 sibaNo Gravatar August 2, 2012 at 12:08 pm

(A) The final Office action rejection is in a second Office action and uses newly cited art under 35 U.S.C. § 102(b) to reject unamended claims that were objected to but not rejected in a first Office action.

Whenever, the examiner makes a new rejection not in the first official action,
then the rejection can not be the final one. The petitioner can ask the examiner to withdraw the final rejection or change into second action

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3 chemEgirlNo Gravatar August 3, 2012 at 10:04 pm

clarity! thank you siba!

Reply

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