[Patentpractice] Success of challenging finality of Office Action

Thu Aug 8 22:18:05 UTC 2024

Suzannah, having an interview is a great idea. We'd had an interview with the Examiner after the first NFOA and he very helpfully agreed that the proposed amendments would overcome the cited references.  And then cited new reference (which I know he's allowed to do).  Maybe this interview could successfully overcome the last references he has in his holster...

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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From: Suzannah K. Sundby <suzannah at canadylortz.com>
Sent: Thursday, August 8, 2024 5:29 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>; Doreen Trujillo <DTrujillo at vlplawgroup.com>
Cc: Katherine Koenig <katherine at koenigipworks.com>
Subject: RE: [Patentpractice] Success of challenging finality of Office Action

I would first call the Examiner... and see if there is some stupid, insignificant Examiner's Amendment that would do the trick... during the call, I'd point out why the finality is improper... that if you don't get an allowance, you will petition to withdraw the finality, and if it is maintained, then you'll have to appeal.

The Examiner will then weigh the risk of getting a ding for an improper final action and/or the amount of work required if you appeal.

It's been my experience that examiners are motivated under such circumstances to "compact prosecution" by allowing the claims upon entry of some stupid little Examiner's Amendment that helps the examiner save face.

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
T: 202.486.8020
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Katherine Koenig via Patentpractice
Sent: Thursday, August 8, 2024 4:18 PM
To: Doreen Trujillo <DTrujillo at vlplawgroup.com<mailto:DTrujillo at vlplawgroup.com>>; 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

Doreen, thank you!  I like this approach, and great point about withdrawn finality and appeal.

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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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: Doreen Trujillo <DTrujillo at vlplawgroup.com<mailto:DTrujillo at vlplawgroup.com>>
Sent: Thursday, August 8, 2024 3:22 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

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<mailto:dtrujillo at VLPLawGroup.com>

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto: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<mailto:patentpractice at oppedahl-lists.com>
Cc: Katherine Koenig <katherine at koenigipworks.com<mailto: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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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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