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

[Roger Browdy]

Justin,

I have had success with petitions to withdraw finality, particularly when my arguments fall within the requirements of the MPEP, i.e., the new rejection was clearly not necessitated by the amendments.

In cases like this, you certainly should decide how to respond and perhaps have an interview with the examiner.  But any amendments to overcome the prior art will almost certainly result in the necessity of filing an RCE.  I don’t understand the appeal or abandon mentality.  If claims have not been amended or evidence considered, RCE is the route you must take to put the case in better form for appeal.

Roger L. Browdy
Partner
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Justin Miller via Patentpractice
Sent: Friday, September 12, 2025 2:22 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Justin Miller <justin at distinctpatentlaw.com>
Subject: [External Sender][Patentpractice] Office action made final despite new grounds of rejection

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://urldefense.proofpoint.com/v2/url?u=https-3A__mpep.uspto.gov_RDMS_MPEP_current-23_current_d0e69118.html&d=DwMFaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=7yDyUE5lzuruhwIvS68v9eFQKnrJuSrXb1MxDfvR_V8&m=jKQ2QYx46wVv-Df3pfjF7FfFEKhyNC37_wS0Gf0yVuqV-1gNZoD9jFZqliWr4FHX&s=00GtQ3kEip7Dup5mBRdOJOwd-6_gkj4ea-wlo8So9Fw&e=>, 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<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.bipc.com_us-2Dpatent-2Dpractice-2Dresponding-2Dto-2Dfinal-2Drejections-2Dso-2Das-2Dto-2Dminimize-2Dthe-2Dneed-2Dfor-2Drce-2Dfilings&d=DwMFaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=7yDyUE5lzuruhwIvS68v9eFQKnrJuSrXb1MxDfvR_V8&m=jKQ2QYx46wVv-Df3pfjF7FfFEKhyNC37_wS0Gf0yVuqV-1gNZoD9jFZqliWr4FHX&s=mJZmkhzxhY4QCMoRKxQTMVBMojbAX51ZaVoSLrxm7xA&e=>

Thanks for reading.

Sincerely,
Justin P. Miller
Patent Attorney
Distinct Patent Law
https://distinctpatentlaw.com/<https://urldefense.proofpoint.com/v2/url?u=https-3A__distinctpatentlaw.com_&d=DwMFaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=7yDyUE5lzuruhwIvS68v9eFQKnrJuSrXb1MxDfvR_V8&m=jKQ2QYx46wVv-Df3pfjF7FfFEKhyNC37_wS0Gf0yVuqV-1gNZoD9jFZqliWr4FHX&s=XhHQin4yLav2kv5bTqBRSYKyYoiM_eu6zSbpMwyULfs&e=>
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