Comments on: A Discussion Of Strategies To Address Successive Non-Final Office Actions That Are Not Advancing Prosecution http://patentablydefined.com/2008/07/01/a-discussion-of-strategies-to-address-successive-non-final-office-actions-that-are-not-advancing-prosecution/ A practical patent prosecution blog published by Michael Kondoudis Mon, 23 Apr 2012 10:38:57 +0000 hourly 1 http://wordpress.org/?v=3.3.2 By: mike http://patentablydefined.com/2008/07/01/a-discussion-of-strategies-to-address-successive-non-final-office-actions-that-are-not-advancing-prosecution/comment-page-1/#comment-3969 mike Wed, 16 Jul 2008 17:55:10 +0000 http://patentablydefined.com/?p=50#comment-3969 ACW, The only practical recourse is to ensure that the Office action is not final. The rejection made in the hypothetical you describe precludes finality because the rejection could have been made in the prior Office action, but was not. Thus, it would not be based on an IDS or claim amendment. And, since the Office action is non-final, the Applicant would have the opportunity to undo the changes. Finally, an Applicant might consider reminding the Office of its policy of compact prosecution. ACW,

The only practical recourse is to ensure that the Office action is not final. The rejection made in the hypothetical you describe precludes finality because the rejection could have been made in the prior Office action, but was not. Thus, it would not be based on an IDS or claim amendment. And, since the Office action is non-final, the Applicant would have the opportunity to undo the changes. Finally, an Applicant might consider reminding the Office of its policy of compact prosecution.

]]> By: ACW http://patentablydefined.com/2008/07/01/a-discussion-of-strategies-to-address-successive-non-final-office-actions-that-are-not-advancing-prosecution/comment-page-1/#comment-3762 ACW Fri, 11 Jul 2008 16:15:03 +0000 http://patentablydefined.com/?p=50#comment-3762 Michael, is there any recourse of which you are aware to contend with the following situation: Examiner indicates dependent claims allowable, prompting applicant to rewrite claims in independent form to solicit notice of allowance in reliance of indication, followed by Examiner rejecting rewritten claims as obvious over same reference(s). This practice should not be permitted as applicant never would have created potential estoppel issues, but for the indication of allowable subject matter. Interested in your thoughts. Michael, is there any recourse of which you are aware to contend with the following situation: Examiner indicates dependent claims allowable, prompting applicant to rewrite claims in independent form to solicit notice of allowance in reliance of indication, followed by Examiner rejecting rewritten claims as obvious over same reference(s). This practice should not be permitted as applicant never would have created potential estoppel issues, but for the indication of allowable subject matter. Interested in your thoughts.

]]> By: Elizabeth http://patentablydefined.com/2008/07/01/a-discussion-of-strategies-to-address-successive-non-final-office-actions-that-are-not-advancing-prosecution/comment-page-1/#comment-3276 Elizabeth Tue, 01 Jul 2008 18:13:28 +0000 http://patentablydefined.com/?p=50#comment-3276 In an extreme case of this, I once successfully filed a Rule 181 petition to invoke supervisory authority to have the case reassigned to a different examiner. (I had received four nonfinal office actions, each with successively *worse* art, and had three interviews, two of them with two different SPEs on the call.) I received a Notice of Allowance from a different examiner, including a statement that all previous rejections had been reconsidered and withdrawn. In an extreme case of this, I once successfully filed a Rule 181 petition to invoke supervisory authority to have the case reassigned to a different examiner. (I had received four nonfinal office actions, each with successively *worse* art, and had three interviews, two of them with two different SPEs on the call.) I received a Notice of Allowance from a different examiner, including a statement that all previous rejections had been reconsidered and withdrawn.

]]> By: Daniel http://patentablydefined.com/2008/07/01/a-discussion-of-strategies-to-address-successive-non-final-office-actions-that-are-not-advancing-prosecution/comment-page-1/#comment-3272 Daniel Tue, 01 Jul 2008 11:24:19 +0000 http://patentablydefined.com/?p=50#comment-3272 Michael, thanks for this posting. However, I find the problem most prevalent in cases where the Examiner is completely incompetent and/or doesn't speak English. In such cases, an appeal is the only real option, but with the complexity and pitfalls of appeals on the up, none of the options look really good. Any other suggestions? Michael, thanks for this posting. However, I find the problem most prevalent in cases where the Examiner is completely incompetent and/or doesn’t speak English. In such cases, an appeal is the only real option, but with the complexity and pitfalls of appeals on the up, none of the options look really good. Any other suggestions?

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