[Patentpractice] Success of challenging finality of Office Action

Thu Aug 8 19:46:40 UTC 2024

> *limitations which should reasonably have been expected to be claimed*

I have never tried to petition that, but given the decisions I do get (some
withdrawing finality, some not), that phrase won't buy you anything.   It
would have to be something like the previous action giving a 112(b) that
the claim was missing an essential element or something like that, where
the specific amendment was signaled by the examiner.

I agree with jeff -- if you hve good arguments, appeal. No requirement that
you have given the arguments to the examiner before appeal -- but it's sure
a way lot easier to appeal if you make the arguments in a Rule 116 Request
for Reconsideration, and get the Advisory Action -- much easier to appeal
once the examiner has put a position on paper.   The hardest appeals are
appeals of examiner silence.  Much easier if you have the exameinr making a
statement you can disagee with specifically.

On Thu, Aug 8, 2024 at 2:36 PM Katherine Koenig via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> Hi Jeff,
>
>
>
> Thank you.  Is appeal a good way to go if we have new references cited and
> don’t yet have arguments over that art on the record?
>
>
>
> 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
>
>
>
> *Targeted Intellectual Property Strategy*
>
>
>
> *The information contained in this communication, including any
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>
>
>
> *From:* Jeff Wendt <JLW at wendtfirm.com>
> *Sent:* Thursday, August 8, 2024 2:25 PM
> *To:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Katherine Koenig <katherine at koenigipworks.com>
> *Subject:* Re: [Patentpractice] Success of challenging finality of Office
> Action
>
>
>
> Katherine,
>
>
>
> I would appeal. These days I MAY file one RCE, but no more.
>
>
>
> Jeffrey L Wendt
>
> The Wendt Firm PC
>
> PO Box 26010
>
> Austin TX 78755
>
> 281/703-4820
>
> Wendtfirm.com
>
> JLW at wendtfirm.com
>
>
>
>
>
>
>
>
>
>
>
>
>
> On Aug 8, 2024, at 1:17 PM, Katherine Koenig via Patentpractice <
> patentpractice at oppedahl-lists.com> wrote:
>
> 
>
> 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%23%23al_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
>
>
>
> *Targeted Intellectual Property Strategy*
>
>
>
> *The information contained in this communication, including any
> attachments, is privileged and confidential information intended only for
> the use of the individual or entity named above.  If **you are not the
> intended recipient, or the employee or agent responsible to deliver it to
> the intended recipient, you are hereby notified that any review,
> dissemination, distribution, or copying of this communication is strictly
> prohibited.  If you have received this communication in error, do not read
> it.  Please immediately reply to the sender that you have received this
> communication in error and then destroy all paper and electronic copies.
> Thank you.*
>
>
>
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