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   To issue or not to issue ?
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   Author  Topic: To issue or not to issue ?  (Read 644 times)
datuk
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To issue or not to issue ?
« on: Oct 24th, 2007, 8:47pm »
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Well, the story is this after long discussion with my examiner, he came up with the brilliant idea that IF I combine my independent and one of the dependent, he will most likely allow to be issued. Actually he is not the first who made this offer.  
 
Problem is that I really do not want to. The examiner reasoned that even if I appeal he will keep on sending action letter so as long as he is examiner of this application, it will never see the light (he is the fourth examiner in the last 7 years). Well, he did say this jokingly so whether he could is questionable.  
 
He further reasoned that I could do a continuation later. So guys, please provide some feeback here as I am 50/50 although my guts feeling is to hang on. I am not rich so I do not want to have a patent issued for the sake of it when it is quite obvious not enforceable or marketable. I am not based in the US else I could bring in a suit on my own.
 
Thanks in advance and most appreciative of all previous feedbacks. As usual be safe.
 
Datuk
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pentazole
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Re: To issue or not to issue ?
« Reply #1 on: Oct 25th, 2007, 9:23am »
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Datuk, the clock is ticking.  If you are insinuating that the application has been prosecuted for the past 7 years, I'm guessing you have already gotten a few final office actions, which also means you probably have filed a few RCE's.
 
As you may or may not know, as of November first, the continuation rules are changing.  It's hard for me to see how you have been prosecuting the application for 7 years without some sort of compromise on your side.  Have you amended your first claim?  or have you been just appealing?  Please elaborate.  
 
The Examiner cannot tell you what you are alleging he told you, that as long as he is examiner of this application it will never see the light.  That's some very serious allegation (even if "jokingly".)  Have you been on appeal?  what have the results been?
 
It's common practice to combine a dependent claim with the independent claim to get over prior art rejections.  Does your dependent claim narrow the scope of your main claim that much?  Are there any other limitations in the spec that you can incorporate into your main claim?
 
Have you considered doing what the examiner as asked to at least get one patent, and filing a continuation to try and get your claim allowed as is?
 
I seriously feel that you need the advice of a professional.  if you have been paying prosecution fees for the past 7 years, a consultation with a savvy patent attorney is not going to set you back that much.
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datuk
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Re: To issue or not to issue ?
« Reply #2 on: Oct 27th, 2007, 3:47am »
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on Oct 25th, 2007, 9:23am, pentazole wrote:

 
As you may or may not know, as of November first, the continuation rules are changing.  It's hard for me to see how you have been prosecuting the application for 7 years without some sort of compromise on your side.  Have you amended your first claim?  or have you been just appealing?  Please elaborate.  
 

 
Yes amended the original 3 times. But later only action letters and appeal only once but got to conference stage and got bounce back, examiner issue action letter and then I amended the third time (narrower) just to please the examiner.  
 
on Oct 25th, 2007, 9:23am, pentazole wrote:

 
 
The Examiner cannot tell you what you are alleging he told you, that as long as he is examiner of this application it will never see the light.  That's some very serious allegation (even if "jokingly".)  Have you been on appeal?  what have the results been?
 

 
Wanted to appeal but no result as it was rejected at conference and new action letter by another examiner.  
 
on Oct 25th, 2007, 9:23am, pentazole wrote:

 
It's common practice to combine a dependent claim with the independent claim to get over prior art rejections.  Does your dependent claim narrow the scope of your main claim that much?  Are there any other limitations in the spec that you can incorporate into your main claim?
 

 
According to examiner it does not narrow, in fact he thinks its broad as well. But I disagree with him and I attempted to produce another broader dependent claim, which he thinks is ok. But still I am exploring my  options.  
 
on Oct 25th, 2007, 9:23am, pentazole wrote:

 
 
Have you considered doing what the examiner as asked to at least get one patent, and filing a continuation to try and get your claim allowed as is?
 

 
Yes, I was thinking about this but I am not sure whether this is a way to get me off the examiner's back. But is this a good idea like I will be paying money for a patent that can't be enforced and when its published, my competitors will be able to get around it.  
 
 
on Oct 25th, 2007, 9:23am, pentazole wrote:

 
 
I seriously feel that you need the advice of a professional.  if you have been paying prosecution fees for the past 7 years, a consultation with a savvy patent attorney is not going to set you back that much.
 

 
Yes, thanks for your advice, I do have their advice (after paying big bucks) which is to get this one issue and file for continuation. Thats why I am not  happy because if ths is the  advice, I have already got this from the previous examiner, who is much more accomodating. I think the issue here is that my solution is too simple yet  nobody saw this in the past but on the other hand, examiner would argue there must be prior art out there. But to date they still have not find any.
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JimIvey
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Re: To issue or not to issue ?
« Reply #3 on: Nov 2nd, 2007, 10:59am »
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on Oct 27th, 2007, 3:47am, datuk wrote:
Wanted to appeal but no result as it was rejected at conference and new action letter by another examiner.

If you received a new Office Action, they didn't "reject" you appeal but instead agreed that you had a persuasive case.  If they disagree with you, they allow the appeal to go forward.
 
Yes, it's been frustrating to me, too -- hoping for convergence toward an issued patent only to be brought back out to the exacmining corps with a slightly different, almost identical rejection.  
 
Note that you don't have to wait for a "final" rejection to appeal; you can appeal any claim "twice rejected."  So, you can still go straight to appeal if the new rejection is improper.  
 
If you really want to appeal and not talk to the examining corps anymore (often advisable), appeal and do not request a pre-appeal brief conference.
 
Since examiners now only have authority to reject and no authority to allow (without complex internal PTO procedures), it's often absolutely necessary to gain allowance through appeal.  And, it can be tricky to escape the grasp of the examining corps to get to the appeals board.
 
Regards.
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