Final Office Action

Final Office Action

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In a perfect world, the Examiner will read your non-final office action response, be persuaded by your arguments and possible amendments, and grant the patent.  Alas, ‘tis not often the case.  Usually, the Examiner may change the arguments slightly.  But usually, if the Examiner is not persuaded by your arguments, a final office action will be issued.

The M.P.E.P. gives some guidance on the reason for the final office action:

Before final rejection is in order a clear issue should be developed between the examiner and applicant. To bring the prosecution to as speedy conclusion as possible and at the same time to deal justly by both the applicant and the public, the invention as disclosed and claimed should be thoroughly searched in the first action and the references fully applied; and in reply to this action the applicant should amend with a view to avoiding all the grounds of rejection and objection. Switching from one subject matter to another in the claims presented by applicant in successive amendments, or from one set of references to another by the examiner in rejecting in successive actions claims of substantially the same subject matter, will alike tend to defeat attaining the goal of reaching a clearly defined issue for an early termination, i.e., either an allowance of the application or a final rejection.^[1]M.P.E.P. § 706.07.

So in the initial non-final office action response we analyzed, the practitioner did not make any amendments to the claimed limitations (except for claim 17) and essentially argued that the references supplied do not teach the claimed limitation.  Based on the direction from the M.P.E.P. , if the Examiner believes the practitioner is incorrect (i.e. the references do teach the claimed limitation, etc.), then a final office action may be issued.

You may be wondering what happens if the Examiner is persuaded by the arguments.  In that case, there is a possibility that the claims may be allowed.  Most likely, however, the Examiner will find a different prior art source and re-issue a non-final office action.  The M.P.E.P. indicates when an improper finality:

Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims, nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).^[2]M.P.E.P. § 706.07(a).  

Additionally, as indicated in the paragraph, if the amendments made to the claims in your response caused the Examiner to issue a new grounds of rejection, the finality (e.g. issuing a final office action response) may be proper.  The M.P.E.P. indicates that in such a case, the Examiner may provide the following paragraph:

Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See M.P.E.P. § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).^[3]M.P.E.P. § 706.07(a) ¶7.40.

In essence, therefore, if new grounds of rejection have been introduced (by the applicant), then a final office action may be proper.^[4]For further arguments, see, e.g., “Compact Prosecution and Cost Control: New Grounds of Rejection,” Crawford Maunu Firm Publication, last accessed 04/30/2013, available at … Continue reading   A new grounds of rejection may include a new type of rejection (e.g. 102 rather than 103, etc.), a new prior art reference, or new facts or rationale for rejecting.^[5]See, e.g., “Now What? Strategies for Responding to Final Office Actions,” McDonnell Boehnen Hulbert & Berghoff LLP Firm Publication (3/19/2012), last accessed 04/30/2013, available for … Continue reading

An example is worth a thousand words.  How do you respond to the Examiner to indicate that the finality is not proper?  Consider the following template:

The Office Action stated on page [PAGE NUMBER] that “Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See M.P.E.P. §706.07(a).” [Note that this is boilerplate language used by the USPTO] However, Applicants did not submit any amendments in the previous Response. Rather, Applicants submitted arguments traversing the rejection of [CLAIMS] under [ART-BASED GROUNDS]. As such, the finality of the outstanding Office Action is improper.

Applicants note that the section of the M.P.E.P. cited by the Office Action states that “second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims, nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p)” (M.P.E.P. § 706.07(a), emphasis added). In this case, the newly cited document [NAME] was not submitted in an IDS. Further, per the above, no amendments were made to the claims. Thus, the rejection of claims [NUMBERS] under [GROUNDS] in the outstanding Office Action constitutes new grounds of rejection that were not necessitated by Applicants.

Accordingly, it is respectfully submitted that the finality of the outstanding Office Action is improper and respectfully requested that the finality be withdrawn.^[6]“Office Action Improperly Made Final,” Found Persuasive Blog, last accessed 04/30/2013, available at http://www.foundpersuasive.com/improper_finality.aspx.  Consider reviewing other templates … Continue reading

If the final office action is indeed proper, then we go to the next step of what we can argue.  Any amendment that occurs in the final office action response cannot necessitate a new search.  Therefore, no new material can be added to the claims (i.e. cannot take support from the Specification and put it in the claim, etc.).  However, amendments to the independent claim made may include previously reviewed dependent claims.

In the office action response, if a dependent claim has been allowed, then it is usually a straightforward matter of incorporating such a claim into the independent claims, assuming of course that such a course of action is consistent with your client’s objectives. 

If no dependent claim has been allowed, then the most likely option is essentially to persuasively argue that the prior art sources are not teaching the claimed limitation.  On one hand, if your arguments are sound and solid, stick to them.  The Examiner may have simply made a mistake.  Even if after the final office action, if the Examiner still does not agree, you can then appeal the matter to have it reviewed.

On the other hand, if your arguments are not completely solid (or even if they are), another alternative is simply to put the claims in a better position for allowance.  This may include distinguishing the prior art sources from the claims, or incorporating subject matter from the dependent claims into the independent claims.