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   After Final No Claim Amendments
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   Author  Topic: After Final No Claim Amendments  (Read 436 times)
bluesky
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Posts: 28
After Final No Claim Amendments
« on: Oct 12th, 2007, 11:33am »
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Quick ?.  I have a Final Office Action that is based upon clearly erroneous reasoning by the Examiner.  I am thinking about responding with arguments in an Amenmdent After Final and seeing if the Examiner will budge.  If not, file a Notice of Appeal once the Advisory Action is received.  Any pitfalls to this approach other than the Advisory Action not showing up in time?  I think that's not likely to happen.   Or would I be better going for the appeal brief.  I'd interview the Examiner, but he'll need time to ponder his failed reasoning.  Thanks.
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pentazole
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Posts: 197
Re: After Final No Claim Amendments
« Reply #1 on: Oct 12th, 2007, 11:52am »
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Well, clearly, from the prosecution side, the Examiner is always erroneous, isn't he?  lol =)
It's just our job to show him, using convincing arguments, as to why it is as such.  So be more convincing =)  Is this the first final office action?  If so, then your approach is good.  If it's not the first *final* office action and you have filed an RCE before, then consider filing another RCE before Nov. 1.
« Last Edit: Oct 12th, 2007, 11:53am by pentazole » IP Logged
SoCalAttny
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Re: After Final No Claim Amendments
« Reply #2 on: Oct 12th, 2007, 10:42pm »
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Call the supervising examiner and see what happens.
 
If ther examiner is truly truly wrong then it should be quickly evident to the supervisor. If you need 20 minutes of arguing then maybe the examiner has a point.
 
I always call everyone who has a phone number. Remember, the examiners have to move more paper than any patent attorney.
 
Our office isn't a million cases behind.
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118patent
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Posts: 4
Re: After Final No Claim Amendments
« Reply #3 on: Oct 14th, 2007, 6:13pm »
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If the rejection is clearly erroneous (e.g., the Examiner is misunderstanding the disclosure in the prior art, etc.), I would try a pre-appeal brief conference.  I had some cases that the examiner reopened the prosecution and allowed the application after we requested the pre-appeal brief conference.
« Last Edit: Oct 14th, 2007, 6:25pm by 118patent » IP Logged
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