700 Examination of Applications

Clarity Needed on Second Non-Final According to 706.07(a)

In the case the examiner must withdraw finality of an improper Final rejection, I understand that the Office takes the position that, despite the fact the First Non-Final Rejection was proper, the "second or any subsequent" action may not be made Final if not necessitated by amendments or IDS with its fees/period clauses. However, it absolutely does not make any sense why the examiner should reopen prosecution when amendments necessitating a Final Rejection were filed in the first place in response to the proper Non-Final Rejection.

 

I have discussed the issue with my SPE and a few Primary Examiners who stand by this rule as if it makes sense but are not able to provide any SOUND reasoning whatsoever as to why it would be proper to go back to a second Non-Final. Some PEs are honest and say they have no clue why.

 

I do not have an issue doing the work if I were compensated for it. However, as examiners, we are allotted a certain number of hours to do the work, for example, about 15 hours for the first Non-Final and about 3 hours for the first Final. If I did the Non-Final, I get paid for the 15 hours, and for 3 hours for the Final Rejection. I would not mind doing a second Non-Final if my first Non-Final was improper, but if I am forced to do a second Non-Final after a first proper Non-Final, that is 15 hours of free work that I have to do out of my pocket with no compensation/relief whatsoever.

 

Unless there is an undisputable reason as to why it would be proper to reopen prosecution and go back to a second Non-Final, examiners should be allowed to do withdraw finality of an improper Final Rejection and go second Final. I suggest the MPEP include a section expressly stating what should be done in this type of situation.

 

On a second note, to me it seems like the MPEP 706.07(a) pertains to improper Non-Finals, where it would be improper to do a Final if not necessitated. Further, the MPEP makes absolutely no remark as to a "second Non-Final" in the situation presented above.

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Idea No. 195