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

[David Boundy]

I don't think this is winnable.   The test is "information in an IDS" not
"information submitted for the first time in an IdS."  The examiner's
retort will be "you knew about the reference just as well as I did -- it
was your job to claim around it."

The lesson is "In a daughter, IDS the parent's references before the first
OA."

On Fri, Dec 20, 2024, 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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>
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>
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