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

[Benjamin Keim]

I recently had an examiner deny an interview after final. I think only the second time in my career.

He said there was new pressure within the Office to be efficient. However, there were no new references in my case and my proposed amendments were relatively minor. In Justin's case with a new reference, the Office might have less compunction about interviewing after final. However, an interview is not guaranteed.

-Ben

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Justin Miller via Patentpractice
Sent: Friday, September 12, 2025 11:22 AM
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: [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://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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