USPTO Changes After Final Practice by MPEP Amendment

With the June 2020 revision, the patent office has changed MPEP § 706.07 to seemingly more easily allow first action final rejections, post RCE or continuation filing.  As acknowledged in the change summary (https://www.uspto.gov/web/offices/pac/mpep/mpep-0005-change-summary.html), the requirement that claims be directed to the “same invention” has been replaced with language requiring that the claims be “either identical or patentably indistinct” in order for a first action final rejection to be appropriate.   Under amended MPEP §706.07, it would seem that Examiners can not only issue a first action final when an RCE or continuation is filed with no claim amendments, but also, when the claims are, in the Examiner’s opinion, not patentably distinct from the claims previously examined.

This change to MPEP 706.07 seems to be in conflict with 35 USC §132, which states:

(a) Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be re­examined.

Emphasis added.

Filing an after final response at the two month date in order to draw an advisory action with an indication that the amendments require further search or consideration might provide some level of insurance that a subsequently filed RCE or continuation will not be subject to a first action final.