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   My experience with the Prosecution Process
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   Author  Topic: My experience with the Prosecution Process  (Read 936 times)
datuk
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My experience with the Prosecution Process
« on: Mar 11th, 2007, 4:31am »
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Firstly, I am wondering whether this is a normal prosecution pattern. My application has gone through 1 CPA, 2 RCE and when it came to appeal, I submitted a pre-conference thing which resulted in  reopening the prosecution.  
 
I am not saying this is odd but I observed the examiner was not interested in prosecuting at all and perhaps deliberately gave me a final rejection. For example, despite no amendments in the last RCE, he repeated the same. The last rejection was even worst with a boiler plate reply in response citing cases that has nothing to do with my previous response.  
 
The prosecution started in 2001 and has gone through 3 examiners now and going to be with a fourth examiner when it reopens.  
 
My question is what can I do ? Is it better to go to appeal again ? In another of my application, when I reapply to appeal again after reopening the case, USPTO charged me again despite MPEP 1204.01.  I have appeal to petition office as it is unfair to state something in MPEP and do something else to charge applicants. USPTO basically says it has been a year but there is no limitation of a year.  
 
I am interested to know if there is a way to get a finality towards my application. It seems to be me that the examiners could not find any prior arts that satisfied all the elements but would not give up. They merely like to drag on and on. Any advice ?
 
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Bill Richards
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Re: My experience with the Prosecution Process
« Reply #1 on: Mar 11th, 2007, 9:53am »
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Perhaps someone will chime in, but since cases like this are so fact-specific, it will be next to impossible to get an answer here.  But, one never knows . . .
« Last Edit: Mar 11th, 2007, 9:53am by Bill Richards » IP Logged

William B. Richards, P.E.
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JimIvey
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  jamesdivey  
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Re: My experience with the Prosecution Process
« Reply #2 on: Mar 12th, 2007, 9:29am »
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I'd say your experience is closer to the rule than the exception.  I tend to not have so many CPA/RCEs -- I do my best to converge, like Emmit Smith, look for the hole, one cut, then up field as fast as I can.  Others seem to cut back and juke and jive endlessly in pratent prosecution (from the practitioner's/applicant's perspective).
 
However, the endless rejections on new grounds (even final rejections on new grounds) is something I see all the time.  
 
The other twist in your situation is the reopening of prosecution after a pre-appeal conference.  I use pre-appeal conferences without exception and have never had my case reopened in response.  However, my appeal briefs often draw a response of a Notice of Allowance -- go figure.
 
My tactic is now to appeal as soon as possible.  I don't even wait for a final rejection if a claim has been rejected twice and I don't need to amend.  My goal is to get away from the tech centers as quickly as possible.  They're entirely dysfunctional right now.  It's not the fault of the examiners -- the mid-management is asking them to jump up and down while standing on their heads, not really feasible.  
 
Now, I'm thinking I might file my Notice of Appeal without the request for a pre-appeal conference.  It never occurred to me that it might just keep me in tech center purgatory.
 
As for extreme cases (like where they charge you something they're not allowed to charge), I'd remind one of the availability of the "petition to the commissioner to exercise supervisory authority."  I'm sure it's called something else now, since there's no "commissioner" anymore.  I've only used it once, but it worked.  I'm about to use it again.  We'll see how it goes.
 
I feel your pain....
 
Regards.
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datuk
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Re: My experience with the Prosecution Process
« Reply #3 on: Mar 13th, 2007, 5:25am »
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Thanks James,
 
Agreed. I am thinking whether it is possible to submit an appeal brief anyway despite reopening the case for prosecution. I asked the examiner but he did not respond. The pre-conference thing is merely to reduce the backlog of poor rejections but as far as I know there is nothing  to prevent an applicant to submit an appeal brief following a decison to reopen the case. In fact, nothing has been mailed to me yet, only that in PAIR, it says decision is to reopen prosecution.  
 
I am just tired and it shows that the examiners were betting I would not submit an appeal, so they did a willy nilly job, hoping that the cost will drive me away.  
 
CK
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