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[Robert K S]

Suppose that after a final rejection, the applicant successfully overcomes all the references used in the rejection with a 1.131 affidavit, and simultaneously amends a few piddly little dependent claims at the same time.  The examiner then issues a new final rejection based on all-new references and arguments.  The examiner rejects all claims, even the ones that went un-amended since the last action.

MPEP 706.07(a), "Final Rejection, When Proper on Second Action", states that a rejection

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 [blah blah blah]...

It seems to me that the examiner's new rejection is improperly made final, since the examiner has introduced at least one new ground of rejection that was not necessitated by the applicant's last amendment (seeing as the applicant didn't modify all claims, but the examiner did reject all claims).  Some of the new rejections were instead necessitated by the invalidation of the examiner's previous references via the 1.131.

Thoughts?  If agreed with the above, the new question becomes, why are examiners always trying to get away with issuing finals just because the previous amendment after final has introduced a single amendment?

[JD]

"It seems to me that the examiner's new rejection is improperly made final"

Agreed.

"...why are examiners always trying to get away with issuing finals just because the previous amendment after final has introduced a single amendment?"

Because they're hoping you won't call them on the improper final and will just file an RCE instead.  They know that if you request reconsideration and/or withdrawal of the finality, they will simply issue a bullsh!t advisory action.  If you then petition, they know the petitions process is so broken that the petition will never be decided before your 6 months run out.

The clock continues to tick after final.  The examiners know this.  And they count on the incredible inefficiency of their systems and processes, and the laziness of the PTO employees in general, to eat up your 6 months before you can get any satisfaction.  That's when the RCE gravy train pulls into the station and takes them to bonusland.

[mk1023]

Since this is AF, the examiner could have:
1) Not entered the affidavit (box 8 on advisory)
2) Not entered the amendment (box 3a on advisory; new dependents require "further" consideration)

Issuing a new final is the wrong thing to do for the reason you stated.

"why are examiners always trying to get away with issuing finals just because the previous amendment after final has introduced a single amendment?"
Examiners try to get away with whatever they can to get RCEs (and finals are precursors to RCEs).

[Isaac]

Some of the new rejections were instead necessitated by the invalidation of the examiner's previous references via the 1.131.

If you amended the claims after the first non-final rejection, the examiner is going to feel that a final rejection based on new grounds of rejection is appropriate.  If you overcome those new grounds of rejections primarily by argument or evidence, the examiner will usually issue consecutive a new final rejection, but the examiner will enter your claim amendments on the dependent claims, effectively removing the finality of the previous office action.  I don't know whether this principle applies in your case since you didn't get into it.   Note that the examiner's position is that your original amendments necessitated a new ground of rejection.

Not sure whether the above logic is proper, but for the reasons JD gives, it may not be effective to petition for removal of finality.

The examiner also has some discretion about whether evidence enterred after a final rejection will be considered.   You'd really be screaming if this approach had been used.

[JD]

MPEP 715.09 Seasonable Presentation:
Affidavits or declarations under 37 CFR 1.131 must be timely presented in order to be admitted. Affidavits and declarations submitted under 37 CFR 1.131 and other evidence traversing rejections are considered timely if submitted:

(C) after final rejection, but before or on the same date of filing an appeal, upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented in compliance with 37 CFR 1.116(e).

Your good and sufficient reasons for entry of your 131 affidavit are that the examiner never used the reference your ante-dating until the final rejection, therefore you never had to submit a 131 affidavit.

If your FAOM was a typical A v. B rejection where both references A and B could not be antedated, and your first amendment caused the examiner to change the rejection to A v. C where C could be ante-dated by a 131 affidavit, you have the right under Rule 116(e) to submit the 131 affidavit and have it considered.

I had the same situation I describe above except the C reference was ante-dated by a certified copy of our foreign priority application.  I submitted my after final response along with the certified translation.  The examiner issued me an advisory claiming my response presented new issues that would require further consideration and/or search.  I spoke with the examiner.  Pointless.  Called the SPE.  He gave me the usual, "I'll take care of it" schpiel.  Nothing happens.  I leave some voice mails.  Still nothing.  Call the TC Director, politely and firmly express my extreme displeasure for the horrible way the case is being handled.  Very apologetic call from the SPE an hour later.  Case allowed.

Start calling some people.  Start with the examiner (because once you work your way up to TC Director the first thing you're gonna be asked is, "Well, did you call the examiner?  Did you talk to the SPE?" and you want to be able to say, "Yes, but it got me nowhere."

[LivingItUp]

>It seems to me that the examiner's new rejection is improperly made final, since the examiner has >introduced at least one new ground of rejection that was not necessitated by the applicant's last >amendment

Another dynamic to consider is whether your "piddly amendment" is such that it makes the combination of references originally used incompatible. The examiner might have a particular reasoning for joining the references, and your amendment might undermine that reasoning.

This also happens when a dependent claim is moved into an independent claim.  If the independent claim has other dependent claims, that were not originally dependent on the moved claim, then this would narrow the scope of the other dependent claims. And this might undermine the examiner's art/reasoning.

 

[JimIvey]

I don't have the section to cite handy, but the examiner is supposed to examine all claims and to anticipate the most likely amendments to thereby shorten examination into fewer iterations.  Not doing so is just a misapplication of the rules and the law, not unlike interpreting "and" to mean "or" when determining unity of invention.  However, every amendment, even to correct a silly clerical error, seems to justify "final" rejection on new grounds.

Regards.

[jc4patents]

  Interesting. If the initial rejection was because of Jones and after you
amended claims, the Examiner rejected them over Smith, he would seem to
be justified in making the rejection final because "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 " (MPEP 707.07a).

  Now you remove Smith with your 1.131 affidavit but make no substantive
amendments and the Examiner rejects claims over Johnson and makes it final.

  This new ground of rejection (Johnson) was not necessitated by your amendment
but rather by your affidavit - reading MPEP 707.07a literally, it seems the Examiner
is not justified in the making his last action Final.

[Isaac]

  Interesting. If the initial rejection was because of Jones and after you
amended claims, the Examiner rejected them over Smith, he would seem to
be justified in making the rejection final because "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 " (MPEP 707.07a).

  Now you remove Smith with your 1.131 affidavit but make no substantive
amendments and the Examiner rejects claims over Johnson and makes it final.

My experience has been that most (but not all) examiners take the position that the Johnson based OA is simply a replacement OA for the one based on Smith, and is in response to your amendment after the non-final.  What have others experienced?

[jc4patents]

   Yes I think Isaac is correct - now that I look at it again, the
Examiner (who by now is getting quite miffed because he is not getting
any counts) would say that his first new grounds of rejection (Smith) were
necessitated by your amendment. Once Smith was removed by affidavit and he had
to enter new grounds of rejection (Johnson), he feels this was still
necessitated by your amendment that was in response to his initial rejection
over Jones. It is just that the affidavit caused him to substitute Johnson
for Smith.

[mk1023]

I don't have the section to cite handy, but the examiner is supposed to examine all claims and to anticipate the most likely amendments to thereby shorten examination into fewer iterations.  Not doing so is just a misapplication of the rules and the law, not unlike interpreting "and" to mean "or" when determining unity of invention.  However, every amendment, even to correct a silly clerical error, seems to justify "final" rejection on new grounds.

Regards.

I think you're talking about MPEP 706.07(a)

"A second or any subsequent action on the merits in any application or patent involved in reexamination proceedings should not be made final if it includes a rejection, on prior art not of record, of any claim amended to include limitations which should reasonably have been expected to be claimed."

[Isaac]

I think you're talking about MPEP 706.07(a)

706.07A has been watered down a bit.

"A second or any subsequent action on the merits in any application or patent involved in reexamination proceedings should not be made final if it includes a rejection, on prior art not of record, of any claim amended to include limitations which should reasonably have been expected to be claimed.  However, note that an examiner cannot be expected to foresee whether or how an applicant will amend a claim to overcome a rejection except in very limited circumstances (e.g., where the examiner suggests how applicant can overcome a rejection under 35 U.S.C. 112, second paragraph).

On the other hand, 706.07 has some words about the "spirit" of after final practice.

While the rules no longer give to an applicant the right to "amend as often as the examiner presents new references or reasons for rejection," present practice does not sanction hasty and ill-considered final rejections. The applicant who is seeking to define his or her invention in claims that will give him or her the patent protection to which he or she is justly entitled should receive the cooperation of the examiner to that end, and not be prematurely cut off in the prosecution of his or her application. But the applicant who dallies in the prosecution of his or her application, resorting to technical or other obvious subterfuges in order to keep the application pending before the primary examiner, can no longer find a refuge in the rules to ward off a final rejection.

The examiner should never lose sight of the fact that in every case the applicant is entitled to a full and fair hearing, and that a clear issue between applicant and examiner should be developed, if possible, before appeal. However, it is to the interest of the applicants as a class as well as to that of the public that prosecution of an application be confined to as few actions as is consistent with a thorough consideration of its merits.

[LivingItUp]

  This new ground of rejection (Johnson) was not necessitated by your amendment
but rather by your affidavit - reading MPEP 707.07a literally, it seems the Examiner
is not justified in the making his last action Final.

The "your final was not necessitated by amendment" argument is a serious concern for an examiner.

Let's say you receive a rejection of Smith in view Jones in further view of Jones Jr (so a three-way combination 103 rejection of Smith, Jones, Jones Jr). You respond to the examiner and amend the rejected claim by adding one minor detail. Can the examiner properly make a new final rejection of Smith in view of Anderson ?

The answer is that only if the minor amendment necessitated the examiner to drop the Jones, and Jones Jr references, and supplant them with the Anderson reference.

If there is no justification to drop Jones and Jones Jr., then the examiner cannot rightfully argue that their removal was necessitated by amendment. Instead, the examiner might be arbitrarily "cleaning up" an ugly looking 4-way 103 rejection (Smith in view of Jones in view of Jones Jr. view of Anderson) with a "cleaner" 2-way 103 rejection (Smith in view of Anderson). This would appear to penalize the prosecuting attorney, because how can the attorney be expected to prosecute an arbitrary, and ever-changing string of combinations ?

Don't expect an examiner to have any sympathy though. 

[Robert K S]

OP here.  Wow, this topic got more response than I anticipated.

JD and mk1023 make reference to an "RCE gravy train".  I'd never heard this perspective before.  Is this something examiners really try to go after?  If so, it would simplify things between me and the examiner if there was a simple checkbox on the application paperwork saying "Don't bother to try to milk us for RCEs, examiner, because we never file them.  We only appeal and, if need be, file a continuation."

It looks like we did have some amendments to our independent claims after our first non-final.  Isaac and jc4patents point out that the examiner may be looking to those amendments as the ones that ostensibly necessitated new grounds of rejection, permitting finality.  Nevermind that the examiner ignored those amendments in the first final, instead improperly rejecting the affidavit counter to the clear language of rule 1.131.

So from the examiner's perspective, it is as if the first final never existed, and the second final is taking the place of it.  Bleh.