When can a patent examiner make a second or subsequent action final?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

A patent examiner can make a second or subsequent action final in the following circumstances:

• When the examiner introduces a new ground of rejection that is necessitated by the applicant’s amendment of the claims.
• When the examiner introduces a new ground of rejection based on information submitted in an information disclosure statement (IDS) filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).

As stated in MPEP 706.07(a): “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).”