[Patentpractice] Petition to Withdraw Finality
David Boundy
DavidBoundyEsq at gmail.com
Fri Jan 24 14:50:06 UTC 2025
"... due to a policy that stays all other USPTO action until the petition
is decided."
I missed that in your initial message. "Policies" aren't enforceable
against the public unless they've undergone some degree of rulemaking
process (see my amicus brief at http://dx.doi.org/10.2139/ssrn.5016833
<https://dx.doi.org/10.2139/ssrn.5016833> for a tutorial on "general
statements of policy" under 5 U.S.C. § 553(b)(A)). But the PTO don't give
no rat's ass for no law that comes between the PTO and fee revenue.
So unless you're willing to pursue a case in Federal Court, the practical
reality is that you've got two choices -- appeal or RCE.
The second practical reality is that if a claim is amended, your likelihood
of success on Petition for Premature Final is zero. A Petition for
Premature Final has to fit within MPEP § 706.07. "While the issues of the
claim admittedly changed" -- this petition was dead on arrival, and it was
a mistake to file it (unless you had some strategic plan that goes beyond
getting finality set aside). The PTO's view is that the examiner doesn't
owe you a reasoned explanation. All the examiner owes you is that if
there's a new ground of an unamended claim (or amended but new ground "not
necessitated by amendment") then the action can't be final. They're wrong
(remember -- the PTO don't give no rat's ass for no law), but that's how
the Office of Petitions maximizes fee revenue.
I have a bunch of techniques I use to keep myself within MPEP § 706.07.
One key one is that I almost never amend an independent claim by pulling a
dependent claim up. When that's the claim I want, I push the independent
claim *down* into the dependent claim, so I can claim that the
formerly-dependent-now-rewritten-in-independent-form claim is "unamended"
(or at least "not necessitated by amendment") for final purposes.
On Thu, Jan 23, 2025 at 9:54 PM <steve at hoffberglaw.com> wrote:
> 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
>
> steve at hoffberglaw.com
>
> 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> 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
>
> Tel (646) 472-9737 | Fax: (202) 318-7707
>
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> <http://www.potomaclaw.com>*
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> *David Boundy *| Partner | Potomac Law Group, PLLC
>
> P.O. Box 590638, Newton, MA 02459
>
> Tel (646) 472-9737 | Fax: (202) 318-7707
>
> *dboundy at potomaclaw.com <dboundy at potomaclaw.com>* | *www.potomaclaw.com
> <http://www.potomaclaw.com>*
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Tel (646) 472-9737 | Fax: (202) 318-7707
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