[Patentpractice] Success of challenging finality of Office Action

[Katherine Koenig]

Hi everyone,

We've received a final Office Action for a relatively simple mechanical product, in which the Examiner asserts the finality is proper because our amendments necessitated it.  We already gone two rounds with this Examiner, filed an RCE, and this is the second Office Action after RCE.  In this Final Office Action, these are primarily new references that we haven't yet considered.  For most claims, our previous arguments are found persuasive, but new art is applied (rather than just sticking to the original combination of references).  As I noted, this is a relatively low-tech invention and I believe our amendments (at least our most recent round of amendments) should not be surprising.

Has anyone had success in overturning the finality of an Office Action based on this argument from MPEP 706.07(a)?

A second or any subsequent action on the merits in any application or patent involved in reexamination proceedings should not be made final if it includes a rejection on prior art not of record of any claim amended to include limitations which should reasonably have been expected to be claimed. See MPEP § 904<https://mpep.uspto.gov/RDMS/MPEP/current#/current/d0e115569.html> et seq. However, note that an examiner cannot be expected to foresee whether or how an applicant will amend a claim to overcome a rejection except in very limited circumstances (e.g., where the examiner suggests how applicant can overcome a rejection under 35 U.S.C. 112(b)<https://mpep.uspto.gov/RDMS/MPEP/current#/current/d0e302824912.html##al_d1d85b_2ae65_215>  or pre-AIA 35 U.S.C. 112<https://mpep.uspto.gov/RDMS/MPEP/current#/current/d0e302824.html>, second paragraph).

Best regards,

Katherine

Dr. Katherine Koenig
Registered Patent Attorney
Koenig IP Works, PLLC
2208 Mariner Dr.
Fort Lauderdale, FL 33316
(954) 903-1699
katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>

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