[Patentpractice] Petition to Withdraw Finality

[David Boundy]

Without deep thought and research, you might have a plausible case if
you're willing to go to federal Court.  (But I'd need to research it much
deeper to know whether you have a strong case or a weak one.)  The PTO's
use of strategic delay in deciding petitions is truly beyond the pale, and
you might well have a plausible claim.

The PTO's position is that *In re Jung *absolves the PTO of the obligation
of  5 U.S.C. § 555(e) to give you a useful explanation and *bona fide*
response to your traverse.  Contrast
https://www.law.cornell.edu/uscode/text/5/555 with
https://scholar.google.com/scholar_case?case=1519848467837385132  (Jung is
particularly galling -- while the attorneys were working on the brief, I
told them that 35 U.S.C. § 132 wouldn't get them where they needed to go,
look at § 555 instead.  They went with § 132.  And lost.  Oh well.)

Theoretically, you could request a § 1.136(b) extension.   You have
arguably "prosecuted the application" in a statutory sense, but how likely
do you think it is that the PTO will buy that?  A court maybe (I don't know
how that one would come out).  But the PTO only over dead bodies.

In the real world, where bullying goes unpunished because it generates
revenue for the PTO and the PTO knows that court review will cost you six
figures, the practical reality is that you're stuck.  Appeal.

On Thu, Jan 23, 2025 at 12:24 PM steve--- via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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
>
> steve at hoffberglaw.com
>
> https://www.linkedin.com/in/hoffberg/
>
>
>
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