[Patentpractice] Success of challenging finality of Office Action

Thu Aug 8 19:21:50 UTC 2024

It is difficult to get examiners to acknowledge that the citation of new art in a final rejection is improper when no amendments have been made, so I would expect it is even more difficult when amendments have been made.

If you have  further amendments or evidence you would like submitted in response to the new art, I would suggest that you promptly file a response to attempt to do so. You can also raise the appropriateness of finality in the response. You should be able to get any amendments or evidence specifically addressing the new art admitted even though you are under final rejection, since you did not have an opportunity to address the art previously. If the Examiner refuses, this can be brought up in the appeal brief.

Please note that if the examiner reviews to withdraw finality, the refusal is not appealable. It can only be challenged by petition. You can do so, but you may end up having to file an appeal regardless because of timing, as the petition does not toll the appeal.

Even if you have no amendments or evidence you would like submitted, I would suggest filing a response before the appeal brief. The response will prompt an Advisory Action that will hopefully give you some sense about what the examiner's response to your arguments would be. You could adjust your arguments in an appeal brief accordingly.

Doreen

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Doreen Y. Trujillo
Partner | VLP Law Group LLP
Southeastern Pennsylvania| Blue Bell, PA
Office: +1 (267) 358-6839
Email: dtrujillo at VLPLawGroup.com

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Katherine Koenig via Patentpractice
Sent: Thursday, August 8, 2024 2:14 PM
To: patentpractice at oppedahl-lists.com
Cc: Katherine Koenig <katherine at koenigipworks.com>
Subject: [Patentpractice] Success of challenging finality of Office Action

Hi everyone,

We've received a final Office Action for a relatively simple mechanical product, in which the Examiner asserts the finality is proper because our amendments necessitated it.  We already gone two rounds with this Examiner, filed an RCE, and this is the second Office Action after RCE.  In this Final Office Action, these are primarily new references that we haven't yet considered.  For most claims, our previous arguments are found persuasive, but new art is applied (rather than just sticking to the original combination of references).  As I noted, this is a relatively low-tech invention and I believe our amendments (at least our most recent round of amendments) should not be surprising.

Has anyone had success in overturning the finality of an Office Action based on this argument from MPEP 706.07(a)?

A second or any subsequent action on the merits in any application or patent involved in reexamination proceedings should not be made final if it includes a rejection on prior art not of record of any claim amended to include limitations which should reasonably have been expected to be claimed. See MPEP § 904<https://mpep.uspto.gov/RDMS/MPEP/current#/current/d0e115569.html> et seq. However, note that an examiner cannot be expected to foresee whether or how an applicant will amend a claim to overcome a rejection except in very limited circumstances (e.g., where the examiner suggests how applicant can overcome a rejection under 35 U.S.C. 112(b)<https://mpep.uspto.gov/RDMS/MPEP/current#/current/d0e302824912.html##al_d1d85b_2ae65_215>  or pre-AIA 35 U.S.C. 112<https://mpep.uspto.gov/RDMS/MPEP/current#/current/d0e302824.html>, second paragraph).

Best regards,

Katherine

Dr. Katherine Koenig
Registered Patent Attorney
Koenig IP Works, PLLC
2208 Mariner Dr.
Fort Lauderdale, FL 33316
(954) 903-1699
katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>

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