[Patentpractice] Petitions re premature final [was Office action made final despite new grounds of rejection]

[David Boundy]

The first thing you must understand is the definition of “Premature Final
Rejection.”  A solid consolidation of Federal Circuit precedent is at
IEEE-USA, *Comments on Request for Continued Examination (RCE) Practice*,
available at
https://www.uspto.gov/sites/default/files/patents/law/comments/ieee_20130204.pdf,
§ 3.6 at pages 32-38 and 72-79 (Feb. 4, 2013).



The definition at MPEP § 1207.03 is catastrophically wrong.  It’s
remarkably different from the Federal Circuit’s definition.  The Court has
held that its definition of “new ground” is grounded in the plain meaning
of the Administrative Procedure Act, and the indispensable due process
right to notice of the bases on which a rejection is based.  *In re Leithem*,
661 F.3d 1316, 1319 (Fed. Cir. 2011).  *The PTO has no authority to
“interpret” or depart.*  *Stepan*, 660 F.3d at 1345.  Nonetheless, the PTO
keeps bringing the same loser arguments to the Federal Circuit, and the
Federal Circuit keeps shooting them down.  In several recent cases, the
Court awarded costs against the PTO.  This has been going on for about 20
years.


I had a remark here about competence, basic integrity, honesty, and the
Rules of Professional Responsibility, but I'll let the facts speak for
themselves.



You also need to understand the role of guidance.  See
https://ssrn.com/abstract=4326469



Once you understand those, now the petitions will make sense:

·         16/434,766, Petition of Sep 28, 2023.  The Petition was denied in
part, Nov. 21, 2023, on *exactly* the grounds forbidden by the Federal
Circuit and several executive orders.  It’s really outrageous mutiny
against the law.  But the grant-in-part was got enough that I could go
ahead with the appeal.

·         16/278,112, Petition of Nov. 16, 2021, granted Dec. 10, 2021.

·         14/280,469, Petition of March 23, 2020, granted in part May 18,
2020 (the examiner had raised a bogus restriction requirement, I traversed,
the examiner proceeded to final.  THEN I petitioned the restriction as the
ground to de-final.  Two birds with one stone.)

·         14/962,335.  This is Doreen Trujillo’s.  Petition of March 29,
2019, grant June 26, 2019

·         15/247,078, request to the examiner, Mar 18, 2019 – I withdrew it
when I got where I wanted to go in an interview

On Fri, Sep 12, 2025 at 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
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>


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