[Patentpractice] Petition to Withdraw Finality

Sun Jan 26 05:23:48 UTC 2025

Doreen, David Soucy, and I (and maybe one other person who may add a
contribution) have co-authored an article on appeals that we're about to
submit to JPTOS.  If you are doing an appeal upcoming, send me an email at
nycdeb at gmail.com (not other email addresses.  Just that one.)  Markups
would be welcome for the next week or so.

On Sat, Jan 25, 2025 at 11:54 PM steve--- via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> RCE is a loss, and I will not reward the Examiner or USPTO with a
> concession of defeat.  Period.  Even if I win the Petition, it still shows
> the Examiner that I am a pushover
>
>
>
> Appeal is work, but if I win, we get patent term extension.
>
>
>
> 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:* Andrew Berks <andrew at berksiplaw.com>
> *Sent:* Saturday, January 25, 2025 6:17 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
>
>
>
> 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/
>
>
>
> Emails and attachments received from us may be confidential and/or
> protected by the attorney-client privilege, as attorney work-product or
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> copying, distribution or use of emails or attachments sent by us to other
> than the intended recipient. This communication does not create any legal
> obligations on behalf of the sender, unless executed in a manner indicating
> an intent to be bound.
>
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