Requesting Withdrawal Of The Finality Of An Office Action

January 25, 2009

in After Final Practice,Examples of Responses,Practice Suggestions,Prosecution Strategy,The MPEP,Useful Information

This post discusses requests to withdraw finality.  Under the USPTO’s policy of compact prosecution discussed here, a second office action may properly be made final under most circumstances.  The circumstances are set forth in §706.07(a) of the Manual of Patent Examining Procedure (MPEP), entitled Final Rejection, When Proper on Second Action, which states:

Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims, nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).

The MPEP, in §706.07(d), also provides a remedy when a final Office Action is issued and the conditions of §706.07(a) have not been satisfied.  That section, entitled Final Rejection, Withdrawal of, Premature, provides:

If, on request by applicant for reconsideration, the primary examiner finds the final rejection to have been premature, he or she should withdraw the finality of the rejection. The finality of the Office action must be withdrawn while the application is still pending. The examiner cannot withdraw the final rejection once the application is abandoned.

The following are a few examples of successful Requests to Withdraw Finality.

—- EXAMPLES —-

This first example was submitted in response to a final Office action that mischaracterized a claim.

REQUEST FOR WITHDRAWAL OF FINALITY

Applicants are in receipt of a final Office Action mailed March 13, 2007, in this application. Applicants respectfully request that the finality of the subject Office Action should be withdrawn because the Office has expressly and erroneously misinterpreted claims and, as a result, has failed to consider the patentability arguments presented in the most recently filed Amendment. Further, the Office’s express, incorrect claim characterization precludes the Office Action from addressing the merits of the argument presented concerning one of the presented independent claims.

In support of this request, Applicants state the following:

1. On December 20, 2006, Applicants filed an Amendment that presented independent claim 15 with the following claim recitation:

a disk protector disposed at an outer edge of the disk damper….

2. In response to the Amendment filed December 20, 2006, the Office mailed a final Office Action on March 13, 2007, which explained that all rejections were maintained because:

Applicant argues the limitations which are not in the claim language” because Applicants only claim “…arranged/disposed along an outer edge of the disk damper…Applicant does not claim “… at an outer edge of the disk damper.”

(Office Action, page 3).

3. The aforementioned statement of paragraph 2 is manifestly incorrect and without basis in fact. Indeed, Applicants’ independent claim 15 expressly recites “at.”

4. Section 707.07(f) of the Manual of Patent Examining Procedure (MPEP) instructs that:

Where the applicant traverses any rejection, the examiner should, if he or she repeats the rejection, take note of the applicant’s argument and answer the substance of it.

5. The Office repeated the rejections of all of the claims. The Office, however, neither “took note” of Applicants’ argument nor “answered the substance” of Applicants’ argument. Thus, the final Office Action is deficient because the Office failed to satisfy the requirements of MPEP § 707.07(f).

6. Also, it is submitted that the outstanding Office Action has taken an improper and unreasonable interpretation of claim terms. And, for this additional reason, Applicants respectfully submit that the outstanding Office Action is improper.

In view of the foregoing, Applicants respectfully request withdrawal of the finality of the outstanding Office Action and further request a new non-final Office Action that addresses the merits of claim 15.

This second example was submitted in response to a final Office action that first rejected features that were previously presented for examination.

REQUEST FOR WITHDRAWAL OF FINALITY

Applicant is in receipt of a final Office Action mailed December 25, 2007, in this application.  Applicant respectfully submits that the finality of the subject Office Action is premature and therefore requests withdrawal of that finality, pursuant to Section 706.07(d) of the Manual of Patent Examining Procedure (MPEP).

Grounds
As grounds for this Request, Applicant states as follows:

1.  The final Office Action rejects independent claim 1 on new grounds.  As the Office itself states, “Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action.”  (Final Office Action, page 6).

2.  The sole amendment to independent claim 1 was made in an Amendment filed October 25, 2008.  In that Amendment, Applicant cancelled original claim 2 and amended independent claim 1 to recite the features of cancelled claim 2.

3.  The features of claim 2 that were added to independent claim 1 were previously presented for examination.  Thus, the added features could have been rejected in an earlier Office action but were not.

4.  Section 706.07(a) of the MPEP specifies the conditions under which the finality of a second or subsequent Office action is proper, providing that:
Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement….

5.  Applicant submits that because the features added to independent claim 1 were presented for examination in the preceding Office Action, the new ground of rejection of claim 1 made in the final Office Action cannot reasonably be said to be either necessitated by a claim amendment or an Information Disclosure Statement.

Conclusion
The conditions set forth in § 706.07(a) of the MPEP have not been satisfied.  Accordingly, for that reason alone, as well as the interests of fairness, the finality of the final Office Action should be withdrawn.

This final example was submitted in response to a final Office action that rejected a claim for the first time.

REQUEST FOR WITHDRAWAL OF FINALITY <

Applicant is in receipt of a final Office Action mailed December 25, 2007, in this application.  Applicant respectfully submits that the finality of the subject Office Action is premature and therefore requests withdrawal of that finality, pursuant to Section 706.07(d) of the Manual of Patent Examining Procedure (MPEP).

Grounds For Request
As grounds for this Request, Applicant states as follows:

1.  The final Office Action rejected independent claim 20.

2.  The non-final Office Action that immediately preceded the final Office Action did not reject independent claim 20.

3.  Section 706.07(a) of the MPEP specifies the conditions under which the finality of a second or subsequent Office action is proper, providing that:

Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement….

4.  Applicant submits that the rejection of independent claim 20 is a new ground of rejection.  Also, because Applicant neither amended claim 20 nor filed an IDS between the subject non-final and final Office actions, the conditions required by MPEP § 706.07(a) cannot yet be satisfied.

Conclusion
The conditions set forth in § 706.07(a) of the MPEP have not been satisfied.  Accordingly, for that reason alone, as well as the Office’s policy of compact prosecution, the finality of the final Office Action should be withdrawn.

Two last comments.  First, I prefer to file these Requests as separate, stand alone documents.  Second, each of the examples in this post is based on successful Request.  They are by no means appropriate for every final Office action.  But, when finality is premature, this type of Request can be an effective remedy.

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© 2009, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

{ 19 comments… read them below or add one }

Daniel January 26, 2009 at 8:22 am

Hi, Michael. Thank you very much for this, and all your other helpful and practical suggestions.

Are you suggesting requesting withdrawal of the Final as a stand-alone response, or as part of a substantive reply addressing all outstanding issues?

Either way, since an improper final is petitionable rather than appealable, and since the petition process probably takes longer than the remaining part of the statutory 6 months, this approach seems sadly without teeth. I agree it’s worth a try, particularly in your clear cut cases above, but I wouldn’t expect such a high success rate. Is your experience different?

Mike January 26, 2009 at 12:51 pm

Daniel,

Thank you for your comment. I file these Requests as stand alone documents.

By the way, my the success rate is about 50% and that is about the same rate for the other practitioners with whom I have discussed this subject. The paper just has to be filed promptly.

These Requests work. In fact, every example in this post was based on a successful Request.

anonymous February 2, 2009 at 6:41 pm

Great stuff, Mike. I’ve taken your suggestion with respect to arguing (in a response to a non-final office action) that the next action must be non-final and have had about a 50% success rate. If I could get 50% of the “failures” to be reversed using your request for removal of finality, that would be great.

Did you file these Requests using EFS-Web and, if so, what type of paper did you call it? If not, how did you file it and what mail stop did you use?

mike February 17, 2009 at 4:04 pm

Dear anonymous,

Thank you for the compliment. I usually file these Requests by hand with my other filings. I address them to Mail Stop AF. I uploaded one Request a while back and called it a Miscellaneous Incoming Letter. To be safe, I called the Tech Center so that the Request was not just put in the IFW and ignored.

Ray Roberts February 24, 2009 at 10:41 pm

Great thread! Back to Daniel’s “without teeth” remark, what can one do if they have a clear basis for withdrawing final, have requested withdrawal, and received merely an advisory action back with no remarks on the request? Petitioning, getting no decision by the 6th month after the final action, appealing to avoid abandonment, and then having the case remanded as not ripe for appeal is expensive. Are we missing something here?

mike March 9, 2009 at 12:55 pm

Dear Ray,

Thank you for your compliment. Maybe you could try calling the SPE.

dillon March 16, 2009 at 3:24 pm

Thanks for posting this.

Les May 5, 2009 at 5:28 pm

How would you respond if you filed such a request and the examiner nevertheless issued an advisory action in response to your reply to the inappropriate final office action?

Would you file a 1.181 petition? What extension of time fees would be required if the shortened period for reply had expired?

In a case on my desk I called the examiner prior to responding to the office action. He agreed that finality was premature. I documented that in an interview summary and separately pointed out the premature nature (new grounds not necessitated by amendment or IDS) in my response to the office action. Nevertheless, 2 days AFTER the expiration of the shortened period, and ADVISORY ACTION was mailed. Calls to the examiner have gone unanswered.

mike May 7, 2009 at 2:26 pm

Les, thank you for your question. Maybe a call to the SPE might be in order.

Anonymous July 16, 2009 at 7:11 pm

Les, I too had an examiner agree that an office action was improperly final, after I called him and faxed him my draft Request for Withdrawal of Finality.

The examiner asked me to just go ahead and send an amendment that included his agreement to reopen prosecution.

I will be calling his SPE well before the next extension deadline, if I don’t see a new office action or notice of allowance soon. Mike’s suggestion to get the SPE involved makes a lot of sense to me.

Anonymous July 16, 2009 at 7:17 pm

Mike:

A funny thing has been happening when I successfully contest finality. The examiners have been indicating allowable subject matter, either allowing independent claims or objecting to dependent claims.

When they know that the applicant has another bite the apple, they try to make it easy for the applicant to just bite allowable subject matter–presuably in the hopes that the applicant will just take it and run and they’ll only have to do an notice of allowance and not a new search and a full office aciton.

Anonymous July 16, 2009 at 7:31 pm

It also occured to me that the examiners are indicating allowable subject matter, after I successfully contest finality, because they know that I’ll do the same thing again if they don’t issue a quality rejection on each dependent claim. So they might as well allow the dependent claims that they can’t find art for.

Sarim December 24, 2009 at 2:48 pm

Mike, thanks for an excellent article. For some reason, not too much information is available on the web so your article is a great help. I am confused about one thing. Do I need to file a formal petition for requesting withdrawing of finality or merely uploading a doc through EFS web is sufficient? Will the examiner even consider it if it is not a formal petition?

mike January 12, 2010 at 11:36 am

The Request is a separate document but not a petition. The Request is considered by a SPE I have been told.

Foreign agent July 8, 2010 at 2:52 pm

Mike,
I received an advisory action rejecting an argument of prematureness. I strongly believe the examiner is mistaken.
Would you suggest filing a 1.181 petition, and optionally filing an RCE if the petition is not decided in time? Will the RCE fee be returned in case the petition is granted?
Also, is there a fee for filing this a 1.181 petition?

Thanks

mike July 13, 2010 at 8:07 am

Thank you for your question. I don’t give legal advice on this blog. That being said, however, there are no conditional RCEs in U.S. practice. Also, a petition will likely not succeed if there is any basis for the examiner’s decision. The fact that you disagree, even strongly, with an examiner typically would not warrant Director intervention. Disagreements, as far as the USPTO is concerned, is part of the process.

Sandi Examiner November 7, 2011 at 9:05 pm

You should call the examiner’s supervisor, though. For egregious errors like those in the examples, good customer service (20% of our rating) dictates that we swiftly and politely issue a second non-final in cases like those, no matter how painful.

Excellent Blog, BTW.

Krishna January 16, 2012 at 3:41 am

Mike, I believe responding to “request for withdrawl of finality” is just wasting 2-3 months of time, as more often than not, Examiner does not react positively to this request and again issues Final OA, thereby client losing 2-3 months without any advancement to the prosecution. Instead if he/she can call the Examiner and ask his/her suggestion, that might work. Any thoughts.

Michael Feigin, Esq., NY, NJ Patent Attorney June 17, 2013 at 10:39 am

Another practitioner mentioned this petition to me, so I started doing research on it (and found this), but I kind of echo Krishna’s thoughts … plus why not just file a pre-appeal? If you’re going to make the Examiner angry anyway, you might as well get others to review the substantive part of the rejection and it costs you less usually because you stop the clock on extension fees.

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