706.07(e) Withdrawal of Final Rejection, General [R-08.2012]
Once a final rejection that is not premature has been entered in an application/reexamination proceeding, it should not be withdrawn at the applicant’s or patent owner’s request except on a showing under 37 CFR 1.116(b). Further amendment or argument will be considered in certain instances. An amendment that will place the application either in condition for allowance or in better form for appeal may be admitted. Also, amendments complying with objections or requirements as to form are to be permitted after final action in accordance with 37 CFR 1.116(a).
The examiner may withdraw the rejection of finally rejected claims. If new facts or reasons are presented such as to convince the examiner that the previously rejected claims are in fact allowable or patentable in the case of reexamination, then the final rejection should be withdrawn. Occasionally, the finality of a rejection may be withdrawn in order to apply a new ground of rejection.
Although it is permissible to withdraw a final rejection for the purpose of entering a new ground of rejection, this practice is to be limited to situations where a new reference either fully meets at least one claim or meets it except for differences which are shown to be completely obvious. Normally, the previous rejection should be withdrawn with respect to the claim or claims involved. See MPEP § 1207.03 for a discussion of what may constitute a new ground of rejection.
The practice should not be used for application of subsidiary references, or of cumulative references, or of references which are merely considered to be better than those of record.
When a final rejection is withdrawn, all amendments filed after the final rejection are ordinarily entered.
New grounds of rejection made in an Office action reopening prosecution after the filing of an appeal brief require the approval of the supervisory patent examiner. See MPEP § 1002.02(d).