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   BPAI Appeal - new arguments
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dab2d
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Posts: 73
Re: BPAI Appeal - new arguments
« Reply #15 on: Aug 17th, 2006, 6:46pm »
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I agree with what you are sayiing about the Prime Facie case, but I think that the situation where the Attny doens't have to address is almost un heard of in pratice. I know that the office is very serious about requiring a motivation statement with a 103. Once that motivation statement is made, the Attny should dispute it.
 
 
on Aug 17th, 2006, 5:03pm, Isaac wrote:

 
A new ground of rejection might well use the same art.   But that aside, the examiner is not as limited as you suggest.
 
Rule 41.39 gives the Examiner the ability to raise a new ground of rejection, and does not limit that to the situation where the appellant has made a new argument.  The appellant can then request that prosecution be opened or maintain the appeal.  If he does neither, then he loses on the new grounds of rejection.

 
it is clear that the new grounds of rejection are not a matter of right for the examiner. they have to be accepted by the applicant or prosecution re-opened.  
 
This is what i found on the web... if it helps.  Have a good night.
 
"Examiner’s Answer
Unlike former practice, the Examiner may raise a new ground of rejection in an Examiner’s Answer (§
41.39(a)(2)). This is intended to enable the Examiner to address arguments first made in an appeal brief. When a
new ground of rejection is made in an Examiner’s Answer, the appellant must within two months either (1) request
that prosecution be reopened by filing a reply under Rule 111, or (2) file a reply brief, which acts as a request that
the appeal be maintained. If, however, the appellant files an amendment or evidence, it is treated as a request to
reopen prosecution. The two-month period is extendible only under the limited provisions of Rule 136(b). The
Examiner may submit a supplemental Examiner’s Answer to address any new issue raised in a reply brief. A
supplemental Examiner’s Answer may not include a new ground of rejection."
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dab2d
Junior Member
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Posts: 73
Re: BPAI Appeal - new arguments
« Reply #16 on: Aug 17th, 2006, 6:47pm »
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I agree with what you are sayiing about the Prime Facie case, but I think that the situation where the Attny doens't have to address is almost un heard of in pratice. I know that the office is very serious about requiring a motivation statement with a 103. Once that motivation statement is made, the Attny should dispute it.
 
 
on Aug 17th, 2006, 5:03pm, Isaac wrote:

 
A new ground of rejection might well use the same art.   But that aside, the examiner is not as limited as you suggest.
 
Rule 41.39 gives the Examiner the ability to raise a new ground of rejection, and does not limit that to the situation where the appellant has made a new argument.  The appellant can then request that prosecution be opened or maintain the appeal.  If he does neither, then he loses on the new grounds of rejection.

 
it is clear that the new grounds of rejection are not a matter of right for the examiner. they have to be accepted by the applicant or prosecution re-opened.  
 
This is what i found on the web... if it helps.  Have a good night.
 
"Examiner’s Answer
Unlike former practice, the Examiner may raise a new ground of rejection in an Examiner’s Answer (§
41.39(a)(2)). This is intended to enable the Examiner to address arguments first made in an appeal brief. When a
new ground of rejection is made in an Examiner’s Answer, the appellant must within two months either (1) request
that prosecution be reopened by filing a reply under Rule 111, or (2) file a reply brief, which acts as a request that
the appeal be maintained. If, however, the appellant files an amendment or evidence, it is treated as a request to
reopen prosecution. The two-month period is extendible only under the limited provisions of Rule 136(b). The
Examiner may submit a supplemental Examiner’s Answer to address any new issue raised in a reply brief. A
supplemental Examiner’s Answer may not include a new ground of rejection."
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wallflower
Junior Member
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Posts: 96
Re: BPAI Appeal - new arguments
« Reply #17 on: Aug 17th, 2006, 9:38pm »
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on Aug 17th, 2006, 6:47pm, dab2d wrote:

it is clear that the new grounds of rejection are not a matter of right for the examiner. they have to be accepted by the applicant or prosecution re-opened.  

It seems that what you quoted says that a new ground of rejection is a matter of right.  That is, once a new ground of rejection is made, the appellant can either reopen prosecution or file a reply brief.  Which portion of what you quote gives you the impression that it's not?  Also, I'm not sure what you mean by "accepted by the applicant."  I assume if the appellant is filing a reply brief, then he hasn't "accepted" anything.
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Isaac
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Posts: 3472
Re: BPAI Appeal - new arguments
« Reply #18 on: Aug 18th, 2006, 6:36am »
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I think dab2d is saying that the "intent" of the rule is that new grounds of rejection are to be made only in response to new arguments.  dab2d might be right about the intent of the rule.  However, the statement he quotes is not part of the rule, and does not appear to be from the PTO.
 
I agree with dab2d that making new arguments in an appeal brief is not the best plan.   Certainly a better strategy is to get the examiner to consider the new argument, although why upon accepting the new argument, why an RCE ought to be necessary in lieu of  a withdrawal of finality is another matter.
 
But I don't see any compelling reason not to include an argument developed while writing the appeal brief along with the other arguments.  The rules allow it, and failure to preserve the issue for appeal beyond the agency might be malpractice.
 
One thing that dab2d said that did concern me was the suggestion that examiners would not consider new arguments after a final rejection.   If true that means that a large number of my responses after final were a complete waste of time.
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Isaac
dab2d
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Posts: 73
Re: BPAI Appeal - new arguments
« Reply #19 on: Aug 18th, 2006, 8:57am »
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In sumation, I was incorrect that the applicant cannot present new arguments in the appeal brief. Issac is correct in stating that you can.  
However, i still feel that given that new arguments cannot be made after final, it does present an end around the idea of finality. A real expensive one, but still an end around.  
 
As for the examiner, the point I was trying to make is that if the examiner raises new gounds of rejection in the appeal (not in response to new arguments), it is not a matter of right. The applicant must agree to accept the new arguments or force prosecution to be reopened. I believe that before this rule, any new arguments by the examiner, would cause the re-opening of prosecution.  
 
SO as rights go....  
 
The applicant can argue anything that he wants in the appeal brief, even arguments that have never been presented to the during the prosecution.
 
The examiner can present new arguments for the appeal only if the applicant allows him to do so. Therefore it is not a matter of right. It is only by the grace of the applicant.  
 
The applicant can therefore, get around a final and reopening prosecution if they file an appeal brief and cause the examiner to present new arguments, and refuse to allow the examiner's new arguments to go to the board.  
 
I still think that if examiner is not allowed to present new arguments to the board as a matter of right, the applicants should not be able to either.  
 
Now that being said, does that mean I am not going to present new arguments.... You bet you bottom dollar I am.
 
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