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

[David Boundy]

yes, i petition premature final all the time, and win most of them.  i am
traveling this minute; I will send examples when i'm in front of computer.

I set them up by holding one claim unamended.  (Another reason to traverse
bogus restriction requirements.)


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On Fri, Sep 12, 2025, 2:22 PM Justin Miller via Patentpractice <
patentpractice at oppedahl-lists.com> 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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> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
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