Comments on: Requesting Withdrawal Of The Finality Of An Office Action

By: Krishna

Krishna — Mon, 16 Jan 2012 07:41:10 +0000

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.

By: Sandi Examiner

Sandi Examiner — Tue, 08 Nov 2011 01:05:43 +0000

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.

By: mike

mike — Tue, 13 Jul 2010 12:07:52 +0000

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.

By: Foreign agent

Foreign agent — Thu, 08 Jul 2010 18:52:39 +0000

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

By: mike

mike — Tue, 12 Jan 2010 15:36:32 +0000

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

By: Sarim

Sarim — Thu, 24 Dec 2009 18:48:31 +0000

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?

By: Anonymous

Anonymous — Thu, 16 Jul 2009 19:31:06 +0000

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.

By: Anonymous

Anonymous — Thu, 16 Jul 2009 19:17:22 +0000

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.

By: Anonymous

Anonymous — Thu, 16 Jul 2009 19:11:31 +0000

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.

By: mike

mike — Thu, 07 May 2009 14:26:26 +0000

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

By: Les

Les — Tue, 05 May 2009 17:28:15 +0000

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.

By: dillon

dillon — Mon, 16 Mar 2009 15:24:47 +0000

Thanks for posting this.

By: mike

mike — Mon, 09 Mar 2009 12:55:51 +0000

Dear Ray,

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

By: Ray Roberts

Ray Roberts — Tue, 24 Feb 2009 22:41:35 +0000

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?

By: mike

mike — Tue, 17 Feb 2009 16:04:45 +0000

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.

By: anonymous

anonymous — Mon, 02 Feb 2009 18:41:43 +0000

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?

By: Mike

Mike — Mon, 26 Jan 2009 12:51:18 +0000

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.

By: Daniel

Daniel — Mon, 26 Jan 2009 08:22:51 +0000

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?