[Patentpractice] Petition to Withdraw Finality

[steve at hoffberglaw.com]

Dear Group:

 

I ask your advice, both consensus and obscure, regarding action based on the
below.  I am tending toward a Notice of Appeal, preappeal conference
request, and usurious extension of time. 

 

The subject case had a Final office action issued 7/26/2024.  On 9/26/2024,
I filed both an after final response and a petition to withdraw finality. An
advisory action was issued 10/1/2024, and a Petition Decision was mail
10/23/2024. 

 

The petition was filed because a dependent claim was amended after non-final
rejection, and the Examiner in the final rejection did not actually consider
the effect of the amendment. This became critical when that same dependent
claim was sought to be added to the independent claim.

 

A Request for Reconsideration of the dismissal of the Petition was filed
10/24/2024.  In this request for rehearing, a key sentence was “While the
issues of the claim admittedly changed, and the Examiner withdrew the prior
rejections of claims 1-20, the final rejection did not, other than parroting
the claim language, actually consider and analyze the differences in claim 4
before and after the amendment.”  The conclusion states:

 

Given that the language of the rejection explicitly fails to support the
rejection, it is disingenuous for the Director to state “As detailed above,
the limitation of claim 4 reciting ‘wherein at least two of the plurality of
wearable or implantable sensors sense the same physiological condition’ was
discussed by the examiner as being taught in Khachaturian in the Final
Office action dated 26 July 2024 in the second paragraph on page 5.”  While
the issue may have been nominally “discussed”, that is not the threshold
required to sustain a final rejection according to 35 U.S.C. § 132(a) (“
”)
and 37 C.F.R. § 1.104 (“
”).

 

The request for rehearing was routed to the Office of Petitions, and based
on a discussion, has not even been docketed to a petitions examiner, with
the statutory deadline looming this week. There is thus no possibility that
the petition will be decided before expiration of the statutory period.  

 

Meanwhile, since filing of the request for reconsideration, the Examiner
tells me that she is prohibited from acting on my outstanding second
submission after final rejection with a timely filed AFCP 2.0 request, due
to a policy that stays all other USPTO action until the petition is decided.

 

Suggestions for action?

 

Very truly yours,

 

Steven M. Hoffberg

Hoffberg & Associates

29  Buckout Road

West Harrison, NY 10604

(914) 949-2300 tel

(845) 625-2547 fax

 <mailto:steve at hoffberglaw.com> steve at hoffberglaw.com

 <https://www.linkedin.com/in/hoffberg/>
https://www.linkedin.com/in/hoffberg/

 

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