This is a complex topic, but interesting:
From: TC 2600 Directors
Sent: Monday, November 17, 2008 8:02 AM
Cc: Campbell, Dianne; Christensen, Andrew; Groody, James; Hunter, Daniel; Knode, Marian; Powell, Mark; Walker, Wanda
Subject: Instruction Regarding Making an Office Action FINAL
Recently a question has come up about whether a consecutive FINAL Office action with a new ground of rejection can be made after the finality of a previous Office action has been withdrawn. The answer to that question is set forth as follows.
When the second Final OA stated that the finality of the last OA (the first Final OA) is withdrawn, the first Final OA is back to a non-final status, and the AF amendment (hereinafter “entered amendment”) filed is entered into the case. See MPEP 706.07(e).
At this point, we need to take a close look at the entered amendment to determine whether a consecutive Final OA would be proper. Same requirement is applied here, i.e. Final is proper when it is 1) necessitated by amendment, 2) necessitated by IDS with Fee, or 3) necessitated by invoking the Joint Research Agreement Prior Art Exclusion under 35 USC 103(c), see MPEP 706.07(a).
In the case where the entered amendment simply provided arguments without amending any claim, none of 3 reasons to make proper Final discussed above is applicable. Thus, a second Final OA would be improper with a new ground of rejection.
(1) The examiner made a first action non-final under 102.
(2) Applicant filed a reply amending the claims.
(3) The examiner made a second action final. The claims were rejected under 103 using new prior art. The examiner stated that applicant’s amendment necessitated the new ground of rejection and therefore, the second action was made final.
(4) Applicant filed a reply. The reply only included arguments and the claims were NOT amended.
(5) The examiner made a third action final. The examiner stated in the third office action that the “finality of the last office action has been withdrawn in view of the new ground of rejection.” The claims were rejected under 103 based on different prior art. The examiner stated that applicant’s amendment necessitated the new ground of rejection and therefore, the third action was made final.
THIS IS NOT CORRECT.
When the finality of an office action is withdrawn, all the rejections/objections/requirements set forth in that office action are still there. All this means is that that particular office action is now a non-final office action and therefore, any reply submitted by the applicant in response to that office action is treated under 37 CFR 1.111 rather than 1.116.
Once the examiner withdraws the finality of the second action, the reply filed by applicant (item 4) is treated under 37 CFR 1.111 rather than 37 CFR 1.116. To determine whether the next office action can be made final or not, the examiner must look at the reply filed in item 4 and not the reply filed in item 2. Since the reply filed in item 4 did not include any amendments to the claims, the third action (item 5) with the new ground of rejection CANNOT be made final. The examiner’s statement in the third office action that applicant’s amendment necessitated the new ground of rejection is WRONG since the reply filed in item 4 only included arguments.