[Patentpractice] Petition to Withdraw Finality
David Boundy
DavidBoundyEsq at gmail.com
Fri Jan 24 15:01:12 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. When
an examiner uses the word "policy" it's almost always baloney that the
examiner made up just to avoid doing the damn job. You could challenge the
examiner to give you the written doc that states this "policy." (or you
could look in the MPEP to see whether the "policy" exists. My bet is that
it doesn't.)
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 the calendar. Maybe you have a
legally-sound case, but you don't have the calendar runway to do anything
about it.
The third 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" -- with this admission, 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.
But even that wouldn't solve your problem, because (I gather) you made
additional amendment. The fourth practical reality is that once an Action
is "final" your rights to amend are constricted by 37 CFR § 1.116(b) and
whatever grace the examiner gives you under AFCP. If you want to amend
outside § 1.116(b), there's no right to it, there's no right to an
explanation of the new issues, and there's no whining about it.
> 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/
>>
>>
>>
>> --
>> Patentpractice mailing list
>> Patentpractice at oppedahl-lists.com
>>
>> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>>
>>
>>
>> --
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