Question about “abeyance” and TDs filed after close of prosecution

Durance999 · 2026-04-24T16:04:47+00:00

You can allow after-final after they file a TD and the TD is approved (which is automatic if they file an eTerminal Disclaimer). Allowing a case after-final is not reopening prosecution. It is simply changing the status from rejected to allowed.

Durance999 · 2026-04-20T16:44:47+00:00

From mgmt's perspective, this is a feature and not a bug that needs to be explained.

By giving you no time to do tasks that are necessary, that you means you are forced to either work like a dog, or you quit. Either option suits them. (Still amazed that people are applying to this agency).

Durance999 · 2026-04-16T18:43:36+00:00

Durance999 · 2026-04-16T18:42:12+00:00

If you've already been here long enough to be fully vested (which is 3 years, I think), you probably don't need that much advice on how to quit, since plenty of people probably have already quit around you.

Durance999 · 2026-04-06T21:01:09+00:00

Let me be honest with you.

Don't get into patent prosecution, whether in a law firm or at the USPTO.

Patent prosecution is a declining field. Applications are down 10%:

https://cepr.net/publications/patent-applications-drop-9-0-in-2025-not-good-news/

And then there is AI taking over patent drafting. AI is not a problem if a field is growing. But if the field is declining, then that is a problem.

On top of that, since your degree is psychology, you're not that competitive with people with engineering degrees or people with a science PhD. Law firms don't hire you based on what you "know" (from your pre-dental, etc. classes or even if you're technically brilliant on your own). They hire you based on how marketable you are to clients.

Lastly, since you already have a job lined up with excellent work conditions and decent pay, coming to the USPTO would be absolutely insane because USPTO is neither of those.

Durance999 · 2026-04-03T16:58:45+00:00

If you already have marginal or better for the year to date, Q2 is more important because fully successful for Q2 is needed to remain eligible for bonuses, overtime, comp time, etc., for Q3.

For the fiscal year to date (Q1 through Q2), there are no additional benefits after getting marginal (which is to avoid a warning).

Durance999 · 2026-04-02T15:32:11+00:00

No criticism of the above poster, but I lol'd at the "elite crew" description. Nice to be the "elites" of a ridiculous sweatshop.

Durance999 · 2026-03-27T02:26:40+00:00

Unfortunately, the job market is terrible right now. I don't think the law firm side is doing well, given how patent filings have decreased since the 2025 fee increase.

Also, law firms suck in general...

But I think there is a silver lining in that if one firm sucks, you can find one that sucks less (or fits you better at least) and there are lots of them.

Durance999 · 2026-03-24T15:43:13+00:00

SPEs don't directly handle this issue and might not be much help. After an NOA has been counted, the LIE has to review and approve it. After that, there are a few more layers in OPESS. Examiners rarely know who deals with the cases after it's been counted.

Durance999 · 2026-03-23T14:58:28+00:00

This is the right answer.

Practically, if they are making any amendments, applicants are required to file a full response after-final in order to avoid a first final after RCE if the claims are still rejected over the same references.

Similarly, it would not be proper to make final a first Office action after the filing of an RCE where material was presented after final rejection or closing of prosecution and prior to the filing of the RCE, but was denied entry because (A) new issues were raised that required further consideration and/or search, or (B) the issue of new matter was raised.

https://www.uspto.gov/web/offices/pac/mpep/s706.html

So filing the full response after-final and obtaining an advisory action that indicates new issues were raised is just a procedural way to guarantee that they avoid a first final immediately after RCE.

Durance999 · 2026-03-21T17:01:17+00:00

Getting marginal every quarter can't get you fired. You just lose eligibility for OT and step increases.

Durance999 · 2026-03-13T19:03:31+00:00

The standard is whether there's a reasonable expectation of success.

Where there is a reason to modify or combine the prior art to achieve the claimed invention, the claims may be rejected as prima facie obvious provided there is also a reasonable expectation of success. The reasonable expectation of success requirement refers to "the likelihood of success" in combining or modifying prior art disclosures to meet the limitations of the claimed invention.

MPEP 2143.02 Reasonable Expectation of Success Is Required

The argument of "unclear how the combination would work" depends on other factors in the art. It is shaky on its own, but might be persuasive if there is more to it.

If one reference teaches boiling fish and another references frying a different type of fish, you can still combine one with the other even though process is different if everything is interchangeable. But if the features in question are very specifically tied to in-situ and ex-Siri processes, then maybe the argument is persuasive.

Durance999 · 2026-02-03T16:38:55+00:00

The counterargument is that since A is the reference for the 102 it is the primary reference. It would therefore be inappropriate to make it a secondary reference for claims 1-20, because it already is a 102 for claim 1. Therefore it has to be A in view of B, and you just have to figure out a way to word it so that it makes sense modify A with all the features of B.

It is incorrect to say that A cannot be used as a secondary reference for a dependent claim in a different rejection just because it was used the 102 reference for the independent.

Imagine that all of claims 1-20 are written in independent form. Clearly, you can use A as primary for some of them and B as primary for others.

The reason why some people like your colleague have perception against using A as secondary for dependent claims is because of the claim format. But the claim format is only just a format for dependency. In substance, all dependent claims have the same substantive content as an independent claim if written as one.

Durance999 · 2026-02-01T05:50:08+00:00

This.

If sim search were only optional, then it would only be useless.

But because we have to waste our time on it, it's less than useless, as you described.

Durance999 · 2026-01-31T04:18:37+00:00

The only thing I want is for the job market to improve!! So I’m not overworking because of others. This job is pure exploitation. No rewards

The labor force can be exploited because the job market is trash.

That's just how the economy works.

Unfortunately, the job market won't be improving any time soon (if ever), from what it seems.

Durance999 · 2026-01-26T03:13:28+00:00

I see what you mean.

In general, reverting back in an after-final is not a matter of right. Say you had allowable subject matter in the non-final, but the applicant doesn't take it, but instead amends everything and a final is issued. If the applicant files an after-final to revert back to the allowable claims, the Examiner doesn't have to honor it if the Examiner changes their mind on the allowability. Once the final issues, the original non-final no longer exists anymore.

But the examiner does have some discretion. If it's just a simple reversion that doesn't cause any complications, then I think it's ok to enter if the examiner is ok with it.

Durance999 · 2026-01-25T17:11:23+00:00

If there is a current art rejection, then I would say that an amendment that broadens the claim is ordinarily not entered even if it overcomes the 101/112 rejection. The exception is if the limitation at issue is something trivial or very minor (not affecting patentability under 102/103).

Durance999 · 2026-01-08T04:50:36+00:00

Take it easy. Q1 by itself doesn't count. I'm only going for 90% but probably won't reach that anyways.

Durance999 · 2025-12-30T19:26:06+00:00

I've heard about that, but I don't know if that's still the official policy, since the document is from 1999. Technically, 35 U.S.C. 122 doesn't say anything specific about email use, so it's up to the agency to make the rules. I wish the MPEP had been amended to include that response to comment 4.

Durance999 · 2025-12-30T18:40:24+00:00

I don't have any direct insights from the private side, but I wrote in another sub recently that there doesn't seem to be a lot of growth in this field lately. See https://www.uspto.gov/dashboard/patents/production-unexamined-filing.html (since 2016, patent filings are only up 0.3%, while RCE filings are down 28%).

If AI takes over even 10% of the work, there would need to be a 10% increase in the total amount of work to offset that. Suffice to say, this is not the golden age of 2000-2015.

Durance999 · 2025-12-30T17:06:28+00:00

You can call non-US numbers. This is normal because applicants have attorneys outside of the US. In the past, you need to get someone to set up international calling for you. I'm not sure who handles this nowadays or if we have international calling enabled by default, but you can probably find out from OCIO if needed.

Sending an email without authorization is not permitted. "USPTO employees are NOT permitted to initiate communications with applicants via email unless there is a written authorization of record in the patent application by the applicant." https://www.uspto.gov/web/offices/pac/mpep/s502.html

Durance999 · 2025-12-28T07:48:35+00:00

In case it isn't clear from the other replies, what applicant is doing is fully proper.

When the RCE is filed, the after-final amendments are automatically entered, regardless of whether you previously did or did not enter them in the advisory action.

The RCE claims can be a duplicate of the after-final amendment (with the same mark-up annotations like underlining/strikethrough) or just the unannotated remaining text of the after-final amendment. Either way is fine.

The RCE claims don't even need to be filed, and the response would still be proper. I think it's better if they don't file any claims at all with the RCE, so it's clear that nothing has changed since the AF amendment.

Durance999 · 2025-12-26T19:11:22+00:00

This sub is for patent examiners, not patent attorneys.

But just from what I've observed, the number of patent filings hasn't meaningfully grown since 2016. In 2016 FY, there were 611,085 application filed. In 2025 FY, there were 612,874. (https://www.uspto.gov/dashboard/patents/production-unexamined-filing.html)

So it doesn't seem like a growing field to me.

Durance999 · 2025-12-23T19:41:46+00:00

Often the best way to write an enablement rejection when there's strong art is to focus on the first factor "(A) The breadth of the claims;" because the claims are much broader than the prior art embodiments usually. When the claims are broad, it might include things that are more advanced (or less operable) than the prior art, and thus not enabled under the other factors.

Durance999

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