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Office Action Improperly Made Final


When Applicants traverse an art-based rejection of a claim, the Examiner may make the next Office Action final. However, finality is improper when Applicants did not amend the claims or submit a newly cited reference (or references) in an Information Disclosure Statement (IDS) at the time of, or subsequent to, the traversal. In such instances, it may be beneficial to request that the finality of the next Office Action be withdrawn along the lines of the following.

Example Argument

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 MPEP § 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 MPEP 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)” (MPEP § 706.07(a), emphasis added). In this case, 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that the finality of the outstanding Office Action is improper and respectfully requested that the finality be withdrawn.