For a patent application, I received from USPTO a 2nd Office action as Final, because apparently my reply to the first one did not result in new grounds of rejection.
My question is: if in the first action, claims 1-10 were rejected under 35 USC 102 all citing reference "a", while in the second (after my reply) claims 1-5 are rejected citing reference "a", and claims 6-10 citing new reference "b" not cited in the first action. Is it not "new grounds of rejection"? (thus not allowing the 2nd action to be made Final?)
For 35 USC 103 rejections, in the first action just one claim 5 was rejected citing ref. "c" over "a", while in 2nd Final action, also claims 6-10 are rejected citing ref. "b" over "a". Is this not "new grounds of rejection"?
Basically, in 102 rejection, the cited ref for part of the claims was changed, while in 103 rejection, more claims became rejected, under a ref combination with one prior art ref absent in the first office action.
Do these actions by the examiner not constitute "new grounds of rejection" to not allow him to make the action Final???
I will change the practice area to patent law as it currently is situated as a libel question and personal injury lawyers generally do not know patent law.
William F Lang IVPatent Application AttorneyBeaver, PA ·
In general, a new ground for rejection for the purpose of receiving a second non-final action instead of a final action means that the previous rejection was completely overcome, so that no claims are rejected by the original set of references.
Keep in mind that a final rejection means that filing your response is not enough. You have not met the due date unless you receive a notice of allowance, file a request for continued examination, or file a notice of appeal. You must keep tracking the due date after you file your response to see the examiner's response, and whether an additional filing is needed to keep the application from going abandoned.
If you do not have an attorney, I strongly encourage retaining one. If your invention is important, it is worth protecting properly. Just as you would not perform your own appendectomy, you should not prosecute your own patent application. Self-drafted, self-prosecuted applications are very unlikely to result in a patent. In the very unlikely event that a patent is issued, the claims are very unliekly to provide meaningful protection. Depending on the dates of any prior public disclosures, an attorney's options for correcting defisiencies can be quite limited, so you should act promptly.
This is VERY case specific. An experienced patent attorney may look at the new bases for rejections and successfully argue that they are new grounds and thus should be treated differently, but most often it is better to amend or argue against them. This is also an excellent time to request a phone interview.
However, this should really be done through an experienced attorney. I am not saying this to try to drum up business, but rather because this is a situation where you could lose valuable rights and protection if it is not handled well, and that comes with experience.
There are too many unanswered questions in your narrative. For example, did you amend any of the claims? In this case, a claim chart would be very helpful. A 102 rejection is a statutory bar, which generally requires amendment of the claim(s) in order to overcome the bar unless the examiner is off the mark. As previously indicated, may be the examiner misunderstands the invention in which case an interview is called for. As you may appreciate, this is the time to seek help from a seasoned attorney to navigate the minefield that you are facing.
Assuming you did not amend claims 6-10 (i.e. your response was argument only), it sounds like it would be a new grounds of rejection. You may consider filing an After final amendment asking the Examiner to reopen prosecution or an AFCP 2.0 filing if you are willing to amend at least one independent claim.
An examiner can make the second action final if you amend the claims in response to the first office action, if you fail to rebut the rejections imposed to the first office action, or for other reasons, such as if you cancel all of the original claims and present claims directed to a new invention. What I would need to know to provide you with a better answer is whether you amended the claims. If you did not amend the claims and overcame the original rejection by argument only, and the examiner then applied a new reference against the unamended claims, then that may have been an improper final rejection, but without seeing the claims and the office action, it is not possible to say for certain exactly what happened and whether the examiner was acting properly in making the second office action final.
