Avoiding a Final Office Action: Strategic Maneuvers in Patent Prosecution

When navigating the complex terrain of patent prosecution, the term "final Office Action" can strike apprehension into even the most seasoned patent practitioners. A final rejection signals that the examiner has reached a firm conclusion on the patentability of the claims, limiting the applicant’s ability to make further amendments as a matter of right. However, understanding the nuances of MPEP 706.07(a) and 37 CFR 41.31 can provide strategic opportunities to avoid a final Office Action and keep prosecution alive without resorting to a Request for Continued Examination (RCE).

The General Rule: Second Office Actions Are Typically Final

Under MPEP 706.07(a), the United States Patent and Trademark Office (USPTO) maintains the policy that any second or subsequent Office Action on the merits will be designated as final, unless an exception applies. Once final, an applicant has limited options: they can appeal, file an RCE, or submit an after-final amendment that the examiner may—but is not obligated to—consider.

Exceptions: When a Second Office Action Cannot Be Final

Fortunately, there are two key scenarios where the examiner is required to issue a second non-final Office Action:

1. The Examiner Introduces a New Ground of Rejection

If the examiner introduces a new rejection that is not directly necessitated by the applicant’s claim amendments, the Office Action must remain non-final. This ensures fairness by allowing the applicant an opportunity to respond to new reasoning before facing a final rejection.

Example:

• • The first Office Action rejects claims under 35 U.S.C. § 102 based on Reference A.
  • The applicant submits arguments without amending the claims.
  • The examiner then issues a second Office Action rejecting the claims under 35 U.S.C. § 103 based on new references (B + C).
  • Since the new rejection is not caused by claim amendments, the second Office Action must be non-final.

Strategic Tip: If an examiner is likely to introduce a new rejection based on prior art not previously cited, consider carefully whether arguing without amending may provoke this shift, thereby preventing finality.

2. A New Rejection is Based on an IDS Submitted During the Permitted Timeframe

Under 37 CFR 1.97(c) and 1.17(p), if an applicant submits an Information Disclosure Statement (IDS) during a specific timeframe and pays the required fee, any subsequent rejection that relies on these newly cited references must be non-final.

Example:

• • The examiner rejects claims under § 103 based on References A + B in the first Office Action.
  • The applicant submits an IDS with Reference C, and the examiner cites it in a new rejection.
  • Since the examiner’s rejection is now based on the applicant’s IDS submission, they cannot issue a final rejection.

Strategic Tip: If you foresee a final rejection, strategically submitting an IDS with new but relevant prior art can sometimes force a second non-final Office Action, extending prosecution without an RCE.

Can Introducing a New Claim Avoid a Final Office Action?

Adding new claims can be a tactical way to reset prosecution. However, this strategy works best when:

• • The new claims introduce significant limitations that require fresh examination.
  • The examiner is likely to raise a new ground of rejection, thereby preventing finality.
  • The new claim scope remains fully supported by the original disclosure to avoid a new matter rejection under 35 U.S.C. § 112(a).

Caution: While adding new claims can shift the examiner’s focus, it is not always a guaranteed way to prevent a final Office Action. If the new claims are minor variations of existing claims, the examiner may still issue a final rejection.

Using Declarations to Strengthen the Record

If a claim feature is not well-supported in the specification, an inventor’s declaration under 37 CFR 1.132 can help establish that a person skilled in the art would understand how to implement it. However, declarations cannot introduce new subject matter—they can only provide clarification on how an existing feature is enabled.

Practical Takeaways: Keeping Prosecution Open

• • Argue Without Amending if the examiner may introduce a new ground of rejection, forcing a second non-final action.
  • Submit an IDS with relevant prior art before final rejection under 37 CFR 1.97(c) to trigger a non-final action.
  • Introduce a new claim that is supported by the specification but forces new examination.
  • Use declarations to clarify enablement, but ensure they do not introduce new matter.

By leveraging these strategies, applicants can navigate the complexities of patent prosecution more effectively, extending the opportunity to refine claims without prematurely facing the need for an RCE or an appeal.

In the intricate game of patent prosecution, knowing when and how to prevent a final Office Action can be the difference between a stalled application and a strategically advanced patent grant.

Abhimanyu Singh

Associate Vice President – Electronics and Engineering

Dentons Link Legal

Disclaimer: The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.