[Patentpractice] Success of challenging finality of Office Action

Thu Aug 8 20:16:27 UTC 2024

Thank you, David.  This sounds like good advice.

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>

[cid:image001.png at 01DAE9AE.51A107A0]
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.

From: David Boundy <DavidBoundyEsq at gmail.com>
Sent: Thursday, August 8, 2024 3:47 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Jeff Wendt <JLW at wendtfirm.com>; Katherine Koenig <katherine at koenigipworks.com>
Subject: Re: [Patentpractice] Success of challenging finality of Office Action

> 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<mailto: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<mailto:katherine at koenigipworks.com>

[cid:image001.png at 01DAE9AE.51A107A0]
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.

From: Jeff Wendt <JLW at wendtfirm.com<mailto: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<mailto:patentpractice at oppedahl-lists.com>>
Cc: Katherine Koenig <katherine at koenigipworks.com<mailto: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<mailto:JLW at wendtfirm.com>

On Aug 8, 2024, at 1:17 PM, Katherine Koenig via Patentpractice <patentpractice at oppedahl-lists.com<mailto: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<mailto:katherine at koenigipworks.com>

[cid:image001.png at 01DAE9AE.51A107A0]
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.

--
Patentpractice mailing list
Patentpractice at oppedahl-lists.com<mailto:Patentpractice at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
--
Patentpractice mailing list
Patentpractice at oppedahl-lists.com<mailto:Patentpractice at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com

--

[https://ci3.googleusercontent.com/mail-sig/AIorK4wRMgBgcdZCqTw68Gg6ihENvW6_y8dGBqYvnJwiaIyu6LO5a7IJ-cljKsueIE5uxXbT6s9MN5hE2lGU]
<https://www.iam-media.com/strategy300/individuals/david-boundy>

David Boundy | Partner | Potomac Law Group, PLLC

P.O. Box 590638, Newton, MA  02459

Tel (646) 472-9737 | Fax: (202) 318-7707

dboundy at potomaclaw.com<mailto:dboundy at potomaclaw.com> | www.potomaclaw.com<http://www.potomaclaw.com>

Articles at http://ssrn.com/author=2936470<http://ssrn.com/author=2936470>
<https://www.keynect.us/requestCardAccess/USA500DBOUN?>

Click here to add me to your contacts.<https://www.keynect.us/requestCardAccess/USA500DBOUN?>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240808/f2ec6d3a/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 7679 bytes
Desc: image001.png
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240808/f2ec6d3a/attachment.png>