Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[yujin]

We received a final office action for our patent application.  This final action is based on a new reference because the Examiner thought that the amendments made in the response to the first office action necessitate the new ground of rejection.  But he did not say why the amendments necessitate the new ground of rejections and I did not see either why the amendments do.  May I ask the Examiner why he thought  that amendments necessitate the new ground.

If I amend the claims again, may the Examiner come out with another reference and reject the patent application on a new ground?

Is it a good idea to call the Examiner asking whether my another new specific amendment may cause the patent application granted and in the mean time, won't cause another rejection on a new ground? 

When we file a response to the final office action, should we file an appeal at the same time to keep the patent application alive? Or we shouldn't file an appeal until we receive an advisory from the examiner.
We will file the response to the final office action within two months.   

Thank you very much in advance!

Jin

[JimIvey]

You can ask the examiner to justify the finality of the Office Action, but I wouldn't expect a satisfactory answer.  If there's any way the examiner can justify finality of an Office Action, it will stay final.  Examiners even consider compelling arguments, without amendment, to justify finality of an Office Action, though such is not supported by the rules or the law.

After final, you can file more amendments, but the examiner is not required to consider them -- and certainly won't. 

You can file a Notice of Appeal and, if you don't also file an amendment with the Notice, you can request a Pre-Appeal Brief Review.

Generally, if you think you need another amendment to get the claims allowed, file an RCE with the amendment.  If you think your claims are improperly rejected, appeal.

Regards.

[khazzah]

We received a final office action for our patent application.  This final action is based on a new reference because the Examiner thought that the amendments made in the response to the first office action necessitate the new ground of rejection.  But he did not say why the amendments necessitate the new ground of rejections and I did not see either why the amendments do.  May I ask the Examiner why he thought  that amendments necessitate the new ground.

You may ask, but the Examiner is not required to tell you.

If I amend the claims again, may the Examiner come out with another reference and reject the patent application on a new ground?

Yes. The Examiner can add a new ground of rejection in every single Office Action. The only question is whether or not he can properly make the new Office Action final.

Is it a good idea to call the Examiner asking whether my another new specific amendment may cause the patent application granted and in the mean time, won't cause another rejection on a new ground? 

It's unreasonable to ask the Examiner whether he'll give you a *new* ground of rejection for an amended claim, since most types of amendments require a new search. And he doesn't do a new search until you actually file the amendments.

You can ask the Examiner for his general impression. He may give you that, and you can decide what it's worth.

When we file a response to the final office action, should we file an appeal at the same time to keep the patent application alive?

No, there's no reason to file a Notice of Appeal with the After Final response. Wait for the Advisory Action, and when you get it, file either an RCE or a Notice of Appeal.

But *do* monitor the 6-month deadline from the Final OA. Because it's always possible that the Advisory Action will get stuck at the PTO -- yet the 6-month clock is still ticking.

[yujin]

Hi GUYS:

Thank you very much!


Jin