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

[Jeffrey Semprebon]

I think the best argument here is that, in order for the examiner to claim
that the rejection is based on "INFORMATION submitted in an information
disclosure statement" (emphasis added), they'd have to take the position
that they had completely forgotten the previous long discussion of the
reference in question in the parent, hadn't previously considered it in the
child application (as required), and thus citing it in the IDS somehow
qualified it as new information. Note that the statement refers to
INFORMATION submitted in an IDS, not a "reference" submitted/cited.

Probably worth a call to the examiner first, and point out that it's a
reference they've supposedly already considered, and thus the IDS had no
new information relevant to patentability with regard to that reference.
Unfortunately, the risk of shame in being on record as taking an absurd
position has not historically been a reliable motivator to get examiners to
do a proper job.

Good luck!

-Jeff

Jeffrey E. Semprebon
Registered Patent Agent (mechanical) looking for remote work
jesemprebon at gmail.com
72 Myrtle Street
Claremont, New Hampshire 03743

On Fri, Dec 20, 2024 at 2:04 AM Benjamin Keim via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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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