[Patentpractice] Office action made final despite new grounds of rejection

[Justin Miller]

All,

I am working on a utility patent application for a medical device. Received
a first office action with prior art rejections. I made minor claim
amendments, had an interview with the examiner, who stated that the
application appeared allowable.

But I just received a final office action based on new prior art references.

In the final office action, the examiner states that the action is
properly final because the new grounds of rejection were necessitated by
the amendments. That seems to be a stretch to me.

Has anyone had any luck contesting finality? I have read MPEP 706.07(a)
<https://mpep.uspto.gov/RDMS/MPEP/current#/current/d0e69118.html>, but it
seems unclear as to when the new ground of rejection is "necessitated by
applicant’s amendment of the claims".

My suspicion is that while it is possible to fight the finality of the
office action, it is probably cheaper to file an RCE.

As the bonus question, I welcome any strategies when receiving a final
office action. In my experience, when I receive two rejections from the
same examiner, given that I always participate in an interview, it is often
either time to abandon or appeal. But given that this rejection is
substantively different I think a round of negotiation might be helpful.
Perhaps I can squeeze in another interview before I respond.

Interesting stats (page is slow to load):
https://www.bipc.com/us-patent-practice-responding-to-final-rejections-so-as-to-minimize-the-need-for-rce-filings

Thanks for reading.

Sincerely,
Justin P. Miller
Patent Attorney
Distinct Patent Law
https://distinctpatentlaw.com/
Office: 727.513.4590
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