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   BPAI Appeal - new arguments
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JimIvey
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Re: BPAI Appeal - new arguments
« Reply #10 on: Aug 17th, 2006, 1:40pm »
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on Aug 17th, 2006, 10:40am, Isaac wrote:
One reason the problem might arise through no fault of the practitioner is because the examiner provided a new line of argument in the Advisory Action in response to an entered amendment or considered argument presented after final.
 
The other issue is that the definition of "best argument" may change over prosecution.

Yes, those are both good reasons.  I just meant to suggest some introspection and perhaps caution when "shifting gears" in the appeal process, that's all.
 
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Isaac
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Re: BPAI Appeal - new arguments
« Reply #11 on: Aug 17th, 2006, 1:42pm »
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on Aug 17th, 2006, 11:52am, dab2d wrote:

 
It is the Attnys./agents who should find holes in the rejection. If the rejection is weak, the agent should poiint the weakness out. One we make more money and two we have more time. Even the board places all of the resp. on the agents, because any argument not made before the BAPI on appeal is waived. Why should the examiner's have more resp. than the judges?

 
I'm not responsible for what the examiner gets paid, or how much time the examiner has.  
 
The increased responsibility on the examiner is justified because unlike the BPAI, the examiner is both district attorney and trial judge during prosecution.   The examiner is responsible for deciding when a prima facie case is made and when the prima facie case is rebutted.
 
Also, the examiner is similarly empowered to make a new grounds of rejection in response to your appeal brief.   Why would it be fair for the Examiner to have the right to make a new rejection, but unfair for the practitioner to make a new argument.
 
I agree that it's primarily my responsibility to find the weak points, but in particular, when I'm right about an element not being taught, suggested, or disclosed, that means that there was never a prima facie case to begin with.   The responsibility for making an initial prima facie case lies squarely on the examiner.    That does not mean that the examiner should be pilloried for only being able to do what is humanly possible.   But an appeal brief is not punishment.
 
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If you are going to the board with a truly new argument (where the examiner has addressed your previous arguments) not presented before, I think you have done your client a dis-service. Call the Examiner, tell him about your new arguments, see if he is receptive, and file an RCE.

 
Can't argue with that.  When the examiner is willing to consider further arguments without having to file an appeal brief, then certainly the client is better served by having that discussion.   I wish that were the case more often, but sometimes it seems like the appeal that the examiner hates is what generates the motivation to discuss.
 
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Re: BPAI Appeal - new arguments
« Reply #12 on: Aug 17th, 2006, 1:47pm »
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on Aug 17th, 2006, 12:15pm, wallflower wrote:
I really wish that were the case with Examiners more often.  More often than not, I've had to appeal to get my message across.

I have to agree.  A rather telling statistic is that a surprising high percentage of my appeal briefs (roughly 10-20%) are met with a Notice of Allowability rather than an Examiner's Answer.  The most recent one came after a Pre-Appeal Brief Conference supported the examiner's rejection.  The only thing I can think of is that the examiner couldn't cut corners in his argument for rejection when presenting to the BPAI.
 
I'd say that unreasonable rejections add $5,000-10,000 on average to the cost of getting a patent issued.  I'd suggest raising filing fees by $3,000 and having the examiners (or just giving them time to) do the job right in the first place.
 
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Re: BPAI Appeal - new arguments
« Reply #13 on: Aug 17th, 2006, 4:38pm »
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on Aug 17th, 2006, 1:42pm, Isaac wrote:

 
 
The increased responsibility on the examiner is justified because unlike the BPAI, the examiner is both district attorney and trial judge during prosecution.   The examiner is responsible for deciding when a prima facie case is made and when the prima facie case is rebutted.
 

 
But even with trial judges and DA's, the Attny is resp. for presenting arguments. But I think you are saying the same thing I am. No matter how weak his argument has made the case of 103, the Attny. must make the argument that the prima facie case has not been met. If they still hold the improper rejection, they are in the wrong. However that argument must be presented. No matter how wrong he is, when he made the argument, he thought he was right and that assertion must be rebutted. But I think it wrong to make that assertion after the final.  
 
on Aug 17th, 2006, 1:42pm, Isaac wrote:
   
 
Also, the examiner is similarly empowered to make a new grounds of rejection in response to your appeal brief.   Why would it be fair for the Examiner to have the right to make a new rejection, but unfair for the practitioner to make a new argument.
 

 
It is my understanding that the new grounds are only avaiable in light of new arguments. If the examiner is making new grounds based upon previously presented arguments, he must reopen prosecution. That is what the appeal conference is going to say. If the examiner wants to add more art, forget about it. he has to reopen prosecution
 
on Aug 17th, 2006, 1:42pm, Isaac wrote:
 
 
I agree that it's primarily my responsibility to find the weak points, but in particular, when I'm right about an element not being taught, suggested, or disclosed, that means that there was never a prima facie case to begin with.   The responsibility for making an initial prima facie case lies squarely on the examiner.    That does not mean that the examiner should be pilloried for only being able to do what is humanly possible.   But an appeal brief is not punishment.
 

 
 
Again, i think we are saying the same thing. It appears that you are saying the the argument should be preseneted.  The pratictioner should state that the examiner has failed to present a prima facie case. In that case, they have made the argument and brought it to the examiner attention.  
 
After that, bring them to the board and stick the screws to them.
 
 
« Last Edit: Aug 17th, 2006, 4:40pm by dab2d » IP Logged
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Re: BPAI Appeal - new arguments
« Reply #14 on: Aug 17th, 2006, 5:03pm »
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on Aug 17th, 2006, 4:38pm, dab2d wrote:

But even with trial judges and DA's, the Attny is resp. for presenting arguments. But I think you are saying the same thing I am. No matter how weak his argument has made the case of 103, the Attny. must make the argument that the prima facie case has not been met.

 
The trier of fact has the responsibility of making sure that a prima facie case has been met independent of any arguments by the defendant.   When the trier of fact is also the DA, I think the situation is not completely analogous to other appellate situations.   Whether or not that makes enough difference to allow the appellant to make new arguments is something we can disagree on.  But I think that the options available to the examiner whether or not new arguments are presented (basically an on demand remand back to the trial court) also go way beyond what is available in a normal appellate situation.
 
Quote:
It is my understanding that the new grounds are only available in light of new arguments. If the examiner is making new grounds based upon previously presented arguments, he must reopen prosecution. That is what the appeal conference is going to say. If the examiner wants to add more art, forget about it. he has to reopen prosecution

 
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.
« Last Edit: Aug 17th, 2006, 5:14pm by Isaac » IP Logged

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