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   When can a continuation 1st OA be final?
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   Author  Topic: When can a continuation 1st OA be final?  (Read 1578 times)
Jonathan
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When can a continuation 1st OA be final?
« on: Oct 12th, 2007, 1:03pm »
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I am looking at 706.07(b) and it seems that a first Office Action of a continuation application can be made final if claims in the continuation are identical to the previous application which only received one Office Action and the subject claims were rejected.
 
So, say in the instance if the 1st application had a final rejection, and then a continuation was filed with the twice rejected claims - the 1st Office Action can not then be final, correct?
 
Thanks,
 
Jonathan
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Isaac
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Re: When can a continuation 1st OA be final?
« Reply #1 on: Oct 12th, 2007, 3:27pm »
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on Oct 12th, 2007, 1:03pm, Jonathan wrote:
So, say in the instance if the 1st application had a final rejection, and then a continuation was filed with the twice rejected claims - the 1st Office Action can not then be final, correct?

 
Not correct.   The  first action can be final in the situation you ask about, and under the new rules, it is more likely than before that the rejection will be final.  For example, the Examiner is now specifically authorized to make the rejection final even if it is necessary to make a double patenting rejection in the continuation based on the parent application.
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Isaac
Jonathan
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Re: When can a continuation 1st OA be final?
« Reply #2 on: Oct 12th, 2007, 4:28pm »
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Thanks, so the way to avoid a first final for a continuation is to add a new claim, perhaps modify an existing claim or something along those lines?
 
« Last Edit: Oct 12th, 2007, 4:32pm by Jonathan » IP Logged
Isaac
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Re: When can a continuation 1st OA be final?
« Reply #3 on: Oct 12th, 2007, 5:16pm »
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on Oct 12th, 2007, 4:28pm, Jonathan wrote:

Thanks, so the way to avoid a first final for a continuation is to add a new claim, perhaps modify an existing claim or something along those lines?
 

 
That should work.  One of my ex-examiner coworkers tells me he and his examiner buddies used to wonder why applicants never added a claim (with some unexamined limitations) to avoid first action finals.
 
Another way to avoid a first action final is to continue prosecution to receive an Advisory Action.  If the examiner checks "requires further consideration and/or search" with regard to some claims in the Advisory, then the examiner is prohibited from issuing a first action final if you then file those claims in a continuation  (or with an RCE).
 
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Isaac
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