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   BPAI Appeal - new arguments
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   Author  Topic: BPAI Appeal - new arguments  (Read 8069 times)
Isaac
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Re: BPAI Appeal - new arguments
« Reply #30 on: Aug 18th, 2006, 2:40pm »
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on Aug 18th, 2006, 2:33pm, dab2d wrote:
I thought we where just ironing out the details of what the examiner is allowed to do. While he can make new arguments, only the applicant can do so as a matter of right.

 
New arguments is not the same as a new grounds of rejection.   The Examiner can add additional arguments supporting the current rejection.   The Applicant can make additional arguments traversing the current rejection.   The Examiners new argument does not give the Applicant any new rights.  Only a new ground of rejection does that.
 
 
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Isaac
dab2d
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Re: BPAI Appeal - new arguments
« Reply #31 on: Aug 18th, 2006, 3:06pm »
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Sweet... I am now a junior.
 
That is why I said do an interview as well. It has just been my experiance that if you talk to an examiner and treat them with respect, you will get your point accross. He might not agree with you, but at that point you know if you have to go to appeal.  
 
If the examier is truly missing the point, a good interview can solve so many problems.
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dab2d
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Re: BPAI Appeal - new arguments
« Reply #32 on: Aug 18th, 2006, 3:14pm »
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on Aug 18th, 2006, 2:40pm, Isaac wrote:

 
New arguments is not the same as a new grounds of rejection.   The Examiner can add additional arguments supporting the current rejection.   The Applicant can make additional arguments traversing the current rejection.   The Examiners new argument does not give the Applicant any new rights.  Only a new ground of rejection does that.
 
 

 
 
Agreeed, the examiner can expand on his motivation for combining two references (103), but those references where present at the time of the rejection. But cannot present a new rejection.  
 
The Attny should have present all arguments for why the combination does not meet the 103 requirements from the first time the combination was suggested.  
 
 
 
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dab2d
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Re: BPAI Appeal - new arguments
« Reply #33 on: Aug 18th, 2006, 3:26pm »
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Out for the weekend.... it has been educational.  
 
Have a good one.
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Isaac
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Re: BPAI Appeal - new arguments
« Reply #34 on: Aug 18th, 2006, 4:04pm »
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on Aug 18th, 2006, 3:14pm, dab2d wrote:
The Attny should have present all arguments for why the combination does not meet the 103 requirements from the first time the combination was suggested.

 
I would suggest that this approach is often not in the client's best interest.    
 
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Isaac
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