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

[Timothy Snowden]

re: bonus question - what art unit? Software is much more likely to take 
 >2 rounds as the issues develop, especially if you have to overcome 103 
then 101. Depending on the examiner, 101 itself can take 2+ rounds to 
develop the issues, now matter how much you're gunning for 1 response 
and done.

Regardless, I often get allowances after final even in mechanical arts. 
Often the examiner found something else or thought of another 
interpretation, and you need a couple minor adjustments (argument and/or 
amendment) to respond to that before you can get allowance.

On 9/12/2025 1:21 PM, Justin Miller via Patentpractice wrote:
> 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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