[Patentpractice] Petition to Withdraw Finality

[Andrew Berks]

Given the chaos ensuing at the USPTO, I would file an RCE. Its less work
than an appeal. If you go the appeal route, file the appeal brief which
will take the examiner a year to respond to. Either way you are looking at
a big delay but I would not expect any timely responses from the USPTO in
the near future at least. I like the Federal Court suggestion too, but
that's a lot more work and money.


Andrew H. Berks, Ph.D., J.D.
Patent Attorney
Rivkin Radler LLP
andrew.berks at rivkin.com


On Thu, Jan 23, 2025 at 12:26 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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