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Topic: BPAI Appeal - new arguments (Read 11729 times) |
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wallflower
Junior Member
Posts: 96
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Re: BPAI Appeal - new arguments
« Reply #20 on: Aug 18th, 2006, 9:06am » |
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I might be mistaken, but I thought the Examiner could include a new ground of rejection in the Examiner's Answer regardless of whether the Appellant did so in the Appeal Brief. That's not a matter of right?
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Isaac
Senior Member
Posts: 3472
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Re: BPAI Appeal - new arguments
« Reply #21 on: Aug 18th, 2006, 9:08am » |
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on Aug 18th, 2006, 8:57am, dab2d wrote: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. |
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Why do you insist that new arguments cannot be made after final. Where is this suggested? When a final rejection contains a new ground of rejection based on my amendment, what should my response consist of?
Quote:| 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. |
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Viewed using your definition, none of the Applicant's arguments in an appeal are of right. The Examiner can reopen prosecution at any time. The Examiner or his Art Unit may elect to pull a rejection even if the applicant simply makes the same arguments made before the examiner.
The positions of the applicant and the examiner are not symmetrical.
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| « Last Edit: Aug 18th, 2006, 9:19am by Isaac » |
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Isaac
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Isaac
Senior Member
Posts: 3472
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Re: BPAI Appeal - new arguments
« Reply #22 on: Aug 18th, 2006, 12:13pm » |
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on Aug 18th, 2006, 8:57am, dab2d wrote:| 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. |
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Not quite. This is the case for a new ground of rejection only. The end around only works if the argument (not an amendment) is successful. Otherwise the examiner can rebut the new argument and the appellant does not get a chance to refuse to allow the examiner's new argument to go to the board.
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Isaac
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dab2d
Junior Member
Posts: 73
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Re: BPAI Appeal - new arguments
« Reply #23 on: Aug 18th, 2006, 12:24pm » |
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it is not a matter of right if you want the case to go to the board. It can only go to the board if the applicant with the applicant's consent. without that consent, he CANNOT go to the board. he HAS to reopen prosectuion.
Therefore the new arguments to be presented to the board for the examiner is not a matter of right.
I concceded that applicants can make any arguments they want in the appeal, even arguments they should have made after the first action. But the appeal allows them to make mistakes, but not the examiner.
You are right about the postions not being the same. However, if you go to the board, all the resp. for making arguments is on the Applicant. As I stated before, any arguments not made before the board are waived. Why shouldn't it be the same at the examiner's level. If one does their job right, at least the examiner gets to consider the argument first. The filing of an appeal is very taxing on the examiner (aswell as the applicatnt) as is reopening prosecution (when not an allowance).
Also, you are absolutly right in that the applicant can make new arguments in a request for reconsideration.
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dab2d
Junior Member
Posts: 73
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Re: BPAI Appeal - new arguments
« Reply #24 on: Aug 18th, 2006, 12:30pm » |
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on Aug 18th, 2006, 12:13pm, Isaac wrote:
Not quite. This is the case for a new ground of rejection only. The end around only works if the argument (not an amendment) is successful. Otherwise the examiner can rebut the new argument and the appellant does not get a chance to refuse to allow the examiner's new argument to go to the board.
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Agreeed, but what if the argument is successful. While the examiner should be confident in what they are doing, almost all arguments on both sides of a 103 have some merit. Unless the applicant points out the holes in the examiners case, how can he no hold the rejection. It is a dance and both sides have to do their best.
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