[Patentpractice] Improper finality? Reference listed in IDS also considered in parent.

[Benjamin Keim]

An examiner issued a final office action with a new grounds of rejection of a previously allowable claim. The reference used for the rejection was listed in an IDS submitted with a fee.

MPEP §706.07(a) would seem to permit this. "Furthermore, a second or any subsequent action on the merits in any application will not be made final if it includes a rejection on newly cited art other than information submitted in an information disclosure statement filed under 37 CFR 1.97(c)  with the fee set forth in 37 CFR 1.17(p)."

However, the examiner was well aware of this reference previously because it was considered in depth during the prosecution of the parent application. MPEP § 609.02(II)(A)(2) states: "The examiner will consider information which has been considered by the Office in a parent application.... A listing of the information need not be resubmitted in the continuing application..."

So, I did not need to list this reference in the IDS. (I think it was included because a different foreign jurisdiction used it recently.) But I did. Does the fact it was listed in an IDS (with a fee) even though it wasn't new to the record make finality proper?

Thank you,

-Ben

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