I agree with your post. The problem remains though. Examiners know that making an OA final starts the clock running and they also know that the petition process is a complete joke.

I’ve been to the AIPLA’s “Partnering in Patents” meetings (held annually the Thursday before the AIPLA annual meeting), and consistently the number one complaint from practitioners is after final practice.

Using your example of a non-final OA not treating a claim, I always mention it in my response, right up front, and always state that any OA that rejects/objects to that claim must be non-final. (I would never amend a claim that wasn’t treated as that is an invitation to the examiner to reject it and claim “necessitated,” which would be completely false, but when you complain the (mis)manager handling your complaint is going to give it a cursory review and conclude, “Well you amended it.”)

I always add claims in the situation you describe because what I’ve experienced in the past in that situation is examiners rejecting the previously unaddressed claim and making the rejection final. When I complain, what I get is, “Well, that was a typo, you shoulda known it was rejected.” The examiners do that because they’re rolling the dice that you’re not going to go over their head. And their (mis)managers will likely back them up. Because they too are rolling the dice. They figure you won’t make a big deal out of one claim.

But when I add claims, I tell the examiner, “Hey, your initial OA was deficient because it didn’t treat claim X. You cannot make the next OA final. And in reliance on that, I’ve added claims to further define the invention.” That puts them on notice that I will complain if the next OA is improperly made final.

I’ve faced the exact situation of your example several times. (There’s simply no proof reading going on over there.) Sometimes the examiner acknowledges the mistake and makes the next OA non-final. But there’s always that one, or two, that figure they’re gonna roll the dice.