[Patentpractice] Petition to Withdraw Finality

Fri Jan 24 02:54:22 UTC 2025

David:

I already have an AFCP 2.0 and response pending.  My beef is that “they” have refused to let the Examiner look at it because the Petition is pending.  In other words, my client’s gain from my filing the petition  to withdraw finality is a guaranteed 3 month extension plus appeal fee plus AFCP preparation fee.  The gain is that I am likely to pursue the original claims, since amending claim 1 to add claim 4 was a concession to make progress. That deal seems off the table now. 

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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From: David Boundy <DavidBoundyEsq at gmail.com> 
Sent: Thursday, January 23, 2025 9:49 PM
To: steve at hoffberglaw.com
Cc: David Boundy <DavidBoundyEsq at gmail.com>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Petition to Withdraw Finality

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 <mailto: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

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

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

From: David Boundy <DavidBoundyEsq at gmail.com <mailto: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 <mailto:patentpractice at oppedahl-lists.com> >
Cc: steve at hoffberglaw.com <mailto: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 <mailto: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

 <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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