If the Examiner raises a new grounds of rejection NOT necessitated by your Amendment to the claims and does NOT make it FINAL, chances are, you have a pretty decent Examiner. In many instances, Examiners will try to make an action FINAL which should not be FINAL. You can’t blame them for trying – they are on a quota system. But that’s more the reason I’m impressed when I get a non-final Second Action. The Examiner is admitting that he made a mistake and is willing to sacrifice his quota to make it right.


Your Options After FINAL:

Your options after a FINAL rejection are limited. You basically have three choices:

CLEARLY place the application in condition for allowance;
APPEAL the Rejection to the Board of Appeals; or
RE-FILE your application.

Of course, you always have Option #4, which is to Abandon your Application, but I presume if you have read this far, this was not your intention.


Option #1 – CLEARLY placing the Application in condition for allowance

Many novice applicants or even attorneys, fail to understand what this really means. Basically, you can do this ONLY if the Examiner has indicated allowable subject matter in the application.

For example, if the Examiner has indicated that claims 5-10 would be allowable, but claims 1-4 are rejected, you can cancel claims 1-4 and allow claims 5-10 to issue. This CLEARLY places the application in condition for allowance.

Or for example, the Examiner indicates that “Claims 2-10 would be allowable if rewritten into independent form including the limitations of the base claim and any intervening claims” (yes, this is a form paragraph). You can rewrite claim 2 to include the limitations of claim 1, and cancel claim 1. Presuming that claims 3-10 depend from claim 2, directly or indirectly, the application is CLEARLY in condition for allowance.

Note here that following directions is important. Early in my career, I amended one case by placing the limitations of claim 2 into claim 1 and canceling claim 2. The Examiner refused to enter such an Amendment, even though it did the same thing as putting the limitations of claim 1 into claim 2. While most Examiners are more reasonable than this, it never hurts to follow the rules if you choose this route.

Arguing the rejection or presenting claims that YOU think are allowable is NOT clearly placing the application in condition for allowance. In response to such Amendments you will likely receive an “Advisory Action” stating that your Amendment was not entered. If the time period for response has lapsed, your application may be Abandoned, and you may have to Petition to Revive. Thus, it does not pay to mess around after Final!

Note that just because you CLEARLY place the application in condition for allowance, it does NOT mean that you have to abandon the rejected claims. You could file a Continuation Application to continue prosecution of these claims, and take them to the Board of Appeals if necessary. You could also take the whole case, allowed claims and all, to the Board. However, such a route will delay issuance of the allowed claims and furthermore, put them in further jeopardy – as the Board may disagree with the Examiner and reject ALL of your claims!