[Patentpractice] Petition to Withdraw Finality

Fri Jan 24 02:49:03 UTC 2025

Makes an easy appeal, no?

File a routine Rule 116 Request for Reconsideration at least a day before,
and then the Notice of Appeal and Pre-Appeal no later than the deadline.
(Be sure they're at least a day apart.)  Either you'll get a reverse or
reopen (good) out of the Pre-Appeal, or you'll get an Advisory Acton out of
the Request for Reconsideration, so at least you know the examiner's best
thoughts for a more focused appeal.  (Also, the notice that created
pre-appeals encouraged you to refer to argumetns in prior papers, USPTO, *New
Pre-Appeal Brief Conference Pilot Program*, 1296 Off. Gaz. Pat. Office,
Vol. 2 at 67 (Jul. 12, 2005)
http://www.uspto.gov/web/offices/com/sol/og/2005/week28/patbref.htm ).  If
you can avoid RCEing, that's good -- an increasing fraction of examiners
are playing the kind of game you describe, to milk counts that aren't
earned.  If you keep the count system working in your favor instead of
against you,. eventually you will get the examiner to engage -- either to
allow or to give you a cogent explanation.

On Thu, Jan 23, 2025 at 7:22 PM <steve at hoffberglaw.com> wrote:

> The issue is that claim 4 was materially amended after non-final
> rejection, and I still have no idea what aspect of either reference is
> being treated as disclosing the feature of the claims “wherein at least two
> of the plurality of wearable or implantable sensors sense the same
> physiological condition”.  The issue on Petition is in fact presence of a
> prima facie rejection, but there is a parallel argument on the merits that
> claim 4 is patentable—but, the Examiner is somehow precluded by USPTO
> policy from reviewing my submission.  Claim 4 was amended as follows:
>
>
>
> 4.       (Currently Amended)         The biometric system of claim 1,
> wherein the physiological [[data]] *condition* is selected from the group
> consisting of a cardiac activity, a muscular activity, a galvanic skin
> response, an electrophysiological activity*,* [[;]] a temperature, a
> blood pressure, a glucose level, an oxygen saturation, a nitric oxide
> level, a vasodilation level, an extravascular fluid condition, a physical
> balance, a muscular coordination, a physical exhaustion, an endurance limit*,
> and wherein at least two of the plurality of wearable or implantable
> sensors sense the same physiological condition*.
>
>
>
> The non-final rejection reads as follows:
>
>
>
>           Regarding claim 4, Khachaturian discloses the biometric system
> of claim 1, wherein the physiological data is selected from the group
> consisting of a cardiac activity, a muscular activity, a galvanic skin
> response, an electrophysiological activity; a temperature, a blood
> pressure, a glucose level, an oxygen saturation, a nitric oxide level, a
> vasodilation level, an extravascular fluid condition, a physical balance, a
> muscular coordination, a physical exhaustion, an endurance limit (In one
> aspect, a device measures temperature, heart rate at rest, heart rate
> variability, respiration, SpO2, blood flow, blood pressure, total
> hemoglobin (SpHb), PVi, methemoglobin (SpMet), acoustic respiration rate
> (RRa), carboxyhemoglobin (SpCO), oxygen reserve index (ORi), oxygen content
> (SpOC) and/or EEG of a human(col. 1, lines 28-33)).
>
>
>
> The final rejection reads as follows:
>
>
>
>           Regarding claim 4, Khachaturian *in view of Sharf teaches* the
> biometric system of claim 1, wherein the physiological condition is
> selected from the group consisting of a cardiac activity, a muscular
> activity, a galvanic skin response, an electrophysiological activity, a
> temperature, a blood pressure, a glucose level, an oxygen saturation, a
> nitric oxide level, a vasodilation level, an extravascular fluid condition,
> a physical balance, a muscular coordination, a physical exhaustion, an
> endurance limit*, and wherein at least two of the plurality of wearable
> or implantable sensors sense the same physiological condition* (In one
> aspect, a device measures temperature, heart rate at rest, heart rate
> variability, respiration, SpO2, blood flow, blood pressure, total
> hemoglobin (SpHb), PVi, methemoglobin (SpMet), acoustic respiration rate
> (RRa), carboxyhemoglobin (SpCO), oxygen reserve index (ORi), oxygen content
> (SpOC) and/or EEG of a human (col. 1, lines 28-33)).
>
>
>
> Therefore, the Examiner simply parroted the language of the claim and
> named the secondary reference to the rejection, without altering the
> analysis or otherwise apprising me of which reference allegedly contains
> the “same physiological condition” language (my position on the merits is
> that neither does).  It is certainly not at col. 1, lines 28-33 of
> Khachaturian:
>
>
>
>
>
>           The advisory action included no supplemental sheet, and only
> boxes 1(b), 3(c), 7 (will not be entered), and 12 (“The amendments do not
> overcome the current prior art rejection”) are checked, with no explanation
> whatsoever.
>
>
>
> 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/
>
>
>
>
>
> *From:* David Boundy <DavidBoundyEsq at gmail.com>
> *Sent:* Thursday, January 23, 2025 1:01 PM
> *To:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>
> *Cc:* steve at hoffberglaw.com
> *Subject:* Re: [Patentpractice] Petition to Withdraw Finality
>
>
>
> 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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>
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>
>
>
> --
>
>
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>
> *David Boundy *| Partner | Potomac Law Group, PLLC
>
> P.O. Box 590638, Newton, MA  02459
>
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>
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