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

[Carl Oppedahl]

At the risk of stating the obvious, what happens when an RCE is filed is 
that the Examiner is given a sizeable gift -- 1.8 counts.  I do think 
there are some Examiners that somehow respond in a way to being given 
that many counts all at once.

On 9/12/2025 3:24 PM, Roger Browdy via Patentpractice wrote:
>
> 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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>
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>
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>
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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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