What are the requirements for making a second or subsequent action final in patent examination?
According to MPEP 706.07, a second or any subsequent action on the merits can be made 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).
The MPEP states:
“Where the requirements are not complied with, the examiner has the option of making the next Office action final or non-final.”
This means that if the applicant hasn’t fully addressed all issues or introduced new issues, the examiner can choose to make the next action final. However, if the examiner introduces new grounds of rejection not necessitated by the applicant’s actions, the action should not be made final.
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