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   BPAI Appeal - new arguments
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   Author  Topic: BPAI Appeal - new arguments  (Read 7822 times)
Ned
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BPAI Appeal - new arguments
« on: Aug 15th, 2006, 8:12pm »
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Can you make new arguments to a rejection in an appeal brief that you did not make during prosecution?
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Isaac
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Re: BPAI Appeal - new arguments
« Reply #1 on: Aug 15th, 2006, 9:00pm »
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on Aug 15th, 2006, 8:12pm, Ned wrote:
Can you make new arguments to a rejection in an appeal brief that you did not make during prosecution?

 
Yes you can.  
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Isaac
ithoughtso
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Re: BPAI Appeal - new arguments
« Reply #2 on: Aug 16th, 2006, 3:25pm »
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Yeah!
That's right.
I thought so.
 
I've written only one appeal brief and was troubled by this issue.
 
Everybody chants "no new arguments" like some kind of mantra. I think it's passed mouth to mouth like mononucleosis. But why? And, how were we spared its ravages?
 
I could find no basis for it!
 
Is there a historical basis for the mantra?
 
If I give blood transfusions to infected practitioners will they recover?
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JimIvey
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  jamesdivey  
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Re: BPAI Appeal - new arguments
« Reply #3 on: Aug 17th, 2006, 9:22am »
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on Aug 16th, 2006, 3:25pm, ithoughtso wrote:
Is there a historical basis for the mantra?

I've never heard that mantra.  However, the inclination to add new arguments in an appeal brief begs the question as to why you haven't put forth your best arguments earlier.  It might have been possible to avoid the appeal altogether.
 
It's generally very inefficient (and expensive) to change strategies mid-way.
 
Regards.
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James D. Ivey
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dab2d
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Re: BPAI Appeal - new arguments
« Reply #4 on: Aug 17th, 2006, 10:06am »
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on Aug 16th, 2006, 3:25pm, ithoughtso wrote:
Yeah!
That's right.
I thought so.
 
I've written only one appeal brief and was troubled by this issue.
 
Everybody chants "no new arguments" like some kind of mantra. I think it's passed mouth to mouth like mononucleosis. But why? And, how were we spared its ravages?
 
I could find no basis for it!
 
Is there a historical basis for the mantra?
 
If I give blood transfusions to infected practitioners will they recover?

 
 
As an ex-examiner, we always said that you could not present new arguments in the appeal brief. I think it is worng to presnet such arguments. The examiner has looked at the arguments that you presented and found them to be unpersuasive. Obviously you agreee if you present new arguments.  
 
I am checking with some people, but i don't think you can do it. you get two shots at the apple. By presenting possibly valid arguments in the appeal brief, you get a third shot. While I am not saying Patent regulations are completely logical, it seems to me that it goes against the grain of the policy.  If you present new arguments after a final, the examiner will not consider them so why would he have to in an appeal brief?  
 
 
I would suggest filing an RCE. It is going to save you time and money in the long run. I mean if you have a vaild argument the Examiner is going to give you what you want. He gets three counts ofo the RCE, if it is allowable. That is a half weeks of work in some cases.
 
« Last Edit: Aug 17th, 2006, 10:09am by dab2d » IP Logged
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