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(Message started by: Ned on Aug 15th, 2006, 8:12pm)

Title: BPAI Appeal - new arguments
Post by Ned on Aug 15th, 2006, 8:12pm
Can you make new arguments to a rejection in an appeal brief that you did not make during prosecution?

Title: Re: BPAI Appeal - new arguments
Post by Isaac on Aug 15th, 2006, 9:00pm

on 08/15/06 at 20:12:51, Ned wrote:
Can you make new arguments to a rejection in an appeal brief that you did not make during prosecution?


Yes you can.  

Title: Re: BPAI Appeal - new arguments
Post by ithoughtso on Aug 16th, 2006, 3:25pm
Yeah!
That's right.
I thought so.

I've written only one appeal brief and was troubled by this issue.

Everybody chants "no new arguments" like some kind of mantra. I think it's passed mouth to mouth like mononucleosis. But why? And, how were we spared its ravages?

I could find no basis for it!

Is there a historical basis for the mantra?

If I give blood transfusions to infected practitioners will they recover?

Title: Re: BPAI Appeal - new arguments
Post by JimIvey on Aug 17th, 2006, 9:22am

on 08/16/06 at 15:25:56, ithoughtso wrote:
Is there a historical basis for the mantra?

I've never heard that mantra.  However, the inclination to add new arguments in an appeal brief begs the question as to why you haven't put forth your best arguments earlier.  It might have been possible to avoid the appeal altogether.

It's generally very inefficient (and expensive) to change strategies mid-way.

Regards.

Title: Re: BPAI Appeal - new arguments
Post by dab2d on Aug 17th, 2006, 10:06am

on 08/16/06 at 15:25:56, ithoughtso wrote:
Yeah!
That's right.
I thought so.

I've written only one appeal brief and was troubled by this issue.

Everybody chants "no new arguments" like some kind of mantra. I think it's passed mouth to mouth like mononucleosis. But why? And, how were we spared its ravages?

I could find no basis for it!

Is there a historical basis for the mantra?

If I give blood transfusions to infected practitioners will they recover?



As an ex-examiner, we always said that you could not present new arguments in the appeal brief. I think it is worng to presnet such arguments. The examiner has looked at the arguments that you presented and found them to be unpersuasive. Obviously you agreee if you present new arguments.

I am checking with some people, but i don't think you can do it. you get two shots at the apple. By presenting possibly valid arguments in the appeal brief, you get a third shot. While I am not saying Patent regulations are completely logical, it seems to me that it goes against the grain of the policy.  If you present new arguments after a final, the examiner will not consider them so why would he have to in an appeal brief?


I would suggest filing an RCE. It is going to save you time and money in the long run. I mean if you have a vaild argument the Examiner is going to give you what you want. He gets three counts ofo the RCE, if it is allowable. That is a half weeks of work in some cases.

 

Title: Re: BPAI Appeal - new arguments
Post by Ned on Aug 17th, 2006, 10:09am
Can you explain the mysterious "count" system and bi-weeks?  Thanks!

Title: Re: BPAI Appeal - new arguments
Post by dab2d on Aug 17th, 2006, 10:18am
the one thing I loved about working at the patent office is that you knew exactly what you had to do each week. It is based upon a count system. a long time a go, the PTO determined the average time it took to complete each case in each art. They then divided it by two. That gives you the time you get credit for for the first action and then dispostion (allowance, abandoment, or appeal).

The allowance of an RCE, the examiner would get a dispostion count, and a first action issue (2 counts) for a total of 3.

Example, say that the examiner's art breaks down to 10 hrs per count. The examiner must then have 8 counts by the end of the biweek. That means any combination of things that equal 8 counts.


Title: Re: BPAI Appeal - new arguments
Post by Isaac on Aug 17th, 2006, 10:40am

on 08/17/06 at 09:22:16, JimIvey wrote:
I've never heard that mantra.  However, the inclination to add new arguments in an appeal brief begs the question as to why you haven't put forth your best arguments earlier.  It might have been possible to avoid the appeal altogether.


One reason the problem might arise through no fault of the practitioner is because the examiner provided a new line of argument in the Advisory Action in response to an entered amendment or considered argument presented after final.

The other issue is that the definition of "best argument" may change over prosecution.   Is the best argument is a fresh one that the examiner does not have his heels dug in over but which might create some unwanted estoppel, or is the best argument the old one already made.   When its time to appeal, should you use both?

I understand the feeling of wrongness about appealing using arguments not yet considered by the examiner, but the examiner does get a chance to respond and there is the opportunity to reopen prosecution.   Also there is the issue the treatment of responses after final can be very cursory.   Finally, IMO, a rigid rule exaggerates the adversarial nature of the proceedings.  The Examiner has just as much responsibility to understand the holes in a rejection as does the Applicant.

At any rate someone at my firm forwarded me a voice mail message from someone at the BPAI confirming that the appeal brief could present new arguments.

Title: Re: BPAI Appeal - new arguments
Post by dab2d on Aug 17th, 2006, 11:52am

on 08/17/06 at 10:40:36, Isaac wrote:
The Examiner has just as much responsibility to understand the holes in a rejection as does the Applicant.


I don't think that is a fair assumption. While I agree that an examiner should have a strong rejection, most are made in good faith.  

It is the Attnys./agents who should find holes in the rejection. If the rejection is weak, the agent should poiint the weakness out. One we make more money and two we have more time. Even the board places all of the resp. on the agents, because any argument not made before the BAPI on appeal is waived. Why should the examiner's have more resp. than the judges?

If you are going to the board with a truly new argument (where the examiner has addressed your previous arguments) not presented before, I think you have done your client a dis-service. Call the Examiner, tell him about your new arguments, see if he is receptive, and file an RCE. Trust me, Examiners hate appeals, and he will work with you. And if you truly made a mistake, you can eat the fee and make your client happy. Plus you preserve all arguments for an appeal for an issue that you might actualy need to file.

just my thoughts as an ex-examiner.  No one loves them. Peole love to give them more work and then complain about the quality of their examination...

If the end goal is to have a quality patent, then work with the examiner. Most of the time they will conceed when they are wrong and work with you to develop acceptable language. I always advise one to have a telephone interview with the examiner after the first rejection. so much more can be obtained through talking with them, than what they write.

 


Title: Re: BPAI Appeal - new arguments
Post by wallflower on Aug 17th, 2006, 12:15pm

on 08/17/06 at 11:52:52, dab2d wrote:
Most of the time they will conceed when they are wrong and work with you to develop acceptable language.

I really wish that were the case with Examiners more often.  More often than not, I've had to appeal to get my message across.

Title: Re: BPAI Appeal - new arguments
Post by JimIvey on Aug 17th, 2006, 1:40pm

on 08/17/06 at 10:40:36, Isaac wrote:
One reason the problem might arise through no fault of the practitioner is because the examiner provided a new line of argument in the Advisory Action in response to an entered amendment or considered argument presented after final.

The other issue is that the definition of "best argument" may change over prosecution.

Yes, those are both good reasons.  I just meant to suggest some introspection and perhaps caution when "shifting gears" in the appeal process, that's all.

Regards.

Title: Re: BPAI Appeal - new arguments
Post by Isaac on Aug 17th, 2006, 1:42pm

on 08/17/06 at 11:52:52, dab2d wrote:
It is the Attnys./agents who should find holes in the rejection. If the rejection is weak, the agent should poiint the weakness out. One we make more money and two we have more time. Even the board places all of the resp. on the agents, because any argument not made before the BAPI on appeal is waived. Why should the examiner's have more resp. than the judges?


I'm not responsible for what the examiner gets paid, or how much time the examiner has.  

The increased responsibility on the examiner is justified because unlike the BPAI, the examiner is both district attorney and trial judge during prosecution.   The examiner is responsible for deciding when a prima facie case is made and when the prima facie case is rebutted.

Also, the examiner is similarly empowered to make a new grounds of rejection in response to your appeal brief.   Why would it be fair for the Examiner to have the right to make a new rejection, but unfair for the practitioner to make a new argument.

I agree that it's primarily my responsibility to find the weak points, but in particular, when I'm right about an element not being taught, suggested, or disclosed, that means that there was never a prima facie case to begin with.   The responsibility for making an initial prima facie case lies squarely on the examiner.    That does not mean that the examiner should be pilloried for only being able to do what is humanly possible.   But an appeal brief is not punishment.


Quote:
If you are going to the board with a truly new argument (where the examiner has addressed your previous arguments) not presented before, I think you have done your client a dis-service. Call the Examiner, tell him about your new arguments, see if he is receptive, and file an RCE.


Can't argue with that.  When the examiner is willing to consider further arguments without having to file an appeal brief, then certainly the client is better served by having that discussion.   I wish that were the case more often, but sometimes it seems like the appeal that the examiner hates is what generates the motivation to discuss.


Title: Re: BPAI Appeal - new arguments
Post by JimIvey on Aug 17th, 2006, 1:47pm

on 08/17/06 at 12:15:21, wallflower wrote:
I really wish that were the case with Examiners more often.  More often than not, I've had to appeal to get my message across.

I have to agree.  A rather telling statistic is that a surprising high percentage of my appeal briefs (roughly 10-20%) are met with a Notice of Allowability rather than an Examiner's Answer.  The most recent one came after a Pre-Appeal Brief Conference supported the examiner's rejection.  The only thing I can think of is that the examiner couldn't cut corners in his argument for rejection when presenting to the BPAI.

I'd say that unreasonable rejections add $5,000-10,000 on average to the cost of getting a patent issued.  I'd suggest raising filing fees by $3,000 and having the examiners (or just giving them time to) do the job right in the first place.

Regards.

Title: Re: BPAI Appeal - new arguments
Post by dab2d on Aug 17th, 2006, 4:38pm

on 08/17/06 at 13:42:38, Isaac wrote:
The increased responsibility on the examiner is justified because unlike the BPAI, the examiner is both district attorney and trial judge during prosecution.   The examiner is responsible for deciding when a prima facie case is made and when the prima facie case is rebutted.


But even with trial judges and DA's, the Attny is resp. for presenting arguments. But I think you are saying the same thing I am. No matter how weak his argument has made the case of 103, the Attny. must make the argument that the prima facie case has not been met. If they still hold the improper rejection, they are in the wrong. However that argument must be presented. No matter how wrong he is, when he made the argument, he thought he was right and that assertion must be rebutted. But I think it wrong to make that assertion after the final.


on 08/17/06 at 13:42:38, Isaac wrote:
 

Also, the examiner is similarly empowered to make a new grounds of rejection in response to your appeal brief.   Why would it be fair for the Examiner to have the right to make a new rejection, but unfair for the practitioner to make a new argument.


It is my understanding that the new grounds are only avaiable in light of new arguments. If the examiner is making new grounds based upon previously presented arguments, he must reopen prosecution. That is what the appeal conference is going to say. If the examiner wants to add more art, forget about it. he has to reopen prosecution


on 08/17/06 at 13:42:38, Isaac wrote:


I agree that it's primarily my responsibility to find the weak points, but in particular, when I'm right about an element not being taught, suggested, or disclosed, that means that there was never a prima facie case to begin with.   The responsibility for making an initial prima facie case lies squarely on the examiner.    That does not mean that the examiner should be pilloried for only being able to do what is humanly possible.   But an appeal brief is not punishment.



Again, i think we are saying the same thing. It appears that you are saying the the argument should be preseneted.  The pratictioner should state that the examiner has failed to present a prima facie case. In that case, they have made the argument and brought it to the examiner attention.

After that, bring them to the board and stick the screws to them.



Title: Re: BPAI Appeal - new arguments
Post by Isaac on Aug 17th, 2006, 5:03pm

on 08/17/06 at 16:38:30, dab2d wrote:
But even with trial judges and DA's, the Attny is resp. for presenting arguments. But I think you are saying the same thing I am. No matter how weak his argument has made the case of 103, the Attny. must make the argument that the prima facie case has not been met.


The trier of fact has the responsibility of making sure that a prima facie case has been met independent of any arguments by the defendant.   When the trier of fact is also the DA, I think the situation is not completely analogous to other appellate situations.   Whether or not that makes enough difference to allow the appellant to make new arguments is something we can disagree on.  But I think that the options available to the examiner whether or not new arguments are presented (basically an on demand remand back to the trial court) also go way beyond what is available in a normal appellate situation.


Quote:
It is my understanding that the new grounds are only available in light of new arguments. If the examiner is making new grounds based upon previously presented arguments, he must reopen prosecution. That is what the appeal conference is going to say. If the examiner wants to add more art, forget about it. he has to reopen prosecution


A new ground of rejection might well use the same art.   But that aside, the examiner is not as limited as you suggest.

Rule 41.39 gives the Examiner the ability to raise a new ground of rejection, and does not limit that to the situation where the appellant has made a new argument.  The appellant can then request that prosecution be opened or maintain the appeal.  If he does neither, then he loses on the new grounds of rejection.

Title: Re: BPAI Appeal - new arguments
Post by dab2d on Aug 17th, 2006, 6:46pm

I agree with what you are sayiing about the Prime Facie case, but I think that the situation where the Attny doens't have to address is almost un heard of in pratice. I know that the office is very serious about requiring a motivation statement with a 103. Once that motivation statement is made, the Attny should dispute it.



on 08/17/06 at 17:03:55, Isaac wrote:
A new ground of rejection might well use the same art.   But that aside, the examiner is not as limited as you suggest.

Rule 41.39 gives the Examiner the ability to raise a new ground of rejection, and does not limit that to the situation where the appellant has made a new argument.  The appellant can then request that prosecution be opened or maintain the appeal.  If he does neither, then he loses on the new grounds of rejection.


it is clear that the new grounds of rejection are not a matter of right for the examiner. they have to be accepted by the applicant or prosecution re-opened.

This is what i found on the web... if it helps.  Have a good night.

"Examiner’s Answer
Unlike former practice, the Examiner may raise a new ground of rejection in an Examiner’s Answer (§
41.39(a)(2)). This is intended to enable the Examiner to address arguments first made in an appeal brief. When a
new ground of rejection is made in an Examiner’s Answer, the appellant must within two months either (1) request
that prosecution be reopened by filing a reply under Rule 111, or (2) file a reply brief, which acts as a request that
the appeal be maintained. If, however, the appellant files an amendment or evidence, it is treated as a request to
reopen prosecution. The two-month period is extendible only under the limited provisions of Rule 136(b). The
Examiner may submit a supplemental Examiner’s Answer to address any new issue raised in a reply brief. A
supplemental Examiner’s Answer may not include a new ground of rejection."

Title: Re: BPAI Appeal - new arguments
Post by dab2d on Aug 17th, 2006, 6:47pm

I agree with what you are sayiing about the Prime Facie case, but I think that the situation where the Attny doens't have to address is almost un heard of in pratice. I know that the office is very serious about requiring a motivation statement with a 103. Once that motivation statement is made, the Attny should dispute it.



on 08/17/06 at 17:03:55, Isaac wrote:
A new ground of rejection might well use the same art.   But that aside, the examiner is not as limited as you suggest.

Rule 41.39 gives the Examiner the ability to raise a new ground of rejection, and does not limit that to the situation where the appellant has made a new argument.  The appellant can then request that prosecution be opened or maintain the appeal.  If he does neither, then he loses on the new grounds of rejection.


it is clear that the new grounds of rejection are not a matter of right for the examiner. they have to be accepted by the applicant or prosecution re-opened.

This is what i found on the web... if it helps.  Have a good night.

"Examiner’s Answer
Unlike former practice, the Examiner may raise a new ground of rejection in an Examiner’s Answer (§
41.39(a)(2)). This is intended to enable the Examiner to address arguments first made in an appeal brief. When a
new ground of rejection is made in an Examiner’s Answer, the appellant must within two months either (1) request
that prosecution be reopened by filing a reply under Rule 111, or (2) file a reply brief, which acts as a request that
the appeal be maintained. If, however, the appellant files an amendment or evidence, it is treated as a request to
reopen prosecution. The two-month period is extendible only under the limited provisions of Rule 136(b). The
Examiner may submit a supplemental Examiner’s Answer to address any new issue raised in a reply brief. A
supplemental Examiner’s Answer may not include a new ground of rejection."

Title: Re: BPAI Appeal - new arguments
Post by wallflower on Aug 17th, 2006, 9:38pm

on 08/17/06 at 18:47:11, dab2d wrote:
it is clear that the new grounds of rejection are not a matter of right for the examiner. they have to be accepted by the applicant or prosecution re-opened.

It seems that what you quoted says that a new ground of rejection is a matter of right.  That is, once a new ground of rejection is made, the appellant can either reopen prosecution or file a reply brief.  Which portion of what you quote gives you the impression that it's not?  Also, I'm not sure what you mean by "accepted by the applicant."  I assume if the appellant is filing a reply brief, then he hasn't "accepted" anything.

Title: Re: BPAI Appeal - new arguments
Post by Isaac on Aug 18th, 2006, 6:36am
I think dab2d is saying that the "intent" of the rule is that new grounds of rejection are to be made only in response to new arguments.  dab2d might be right about the intent of the rule.  However, the statement he quotes is not part of the rule, and does not appear to be from the PTO.

I agree with dab2d that making new arguments in an appeal brief is not the best plan.   Certainly a better strategy is to get the examiner to consider the new argument, although why upon accepting the new argument, why an RCE ought to be necessary in lieu of  a withdrawal of finality is another matter.

But I don't see any compelling reason not to include an argument developed while writing the appeal brief along with the other arguments.  The rules allow it, and failure to preserve the issue for appeal beyond the agency might be malpractice.

One thing that dab2d said that did concern me was the suggestion that examiners would not consider new arguments after a final rejection.   If true that means that a large number of my responses after final were a complete waste of time.

Title: Re: BPAI Appeal - new arguments
Post by dab2d on Aug 18th, 2006, 8:57am
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.

As for the examiner, the point I was trying to make is that if the examiner raises new gounds of rejection in the appeal (not in response to new arguments), it is not a matter of right. The applicant must agree to accept the new arguments or force prosecution to be reopened. I believe that before this rule, any new arguments by the examiner, would cause the re-opening of prosecution.

SO as rights go....

The applicant can argue anything that he wants in the appeal brief, even arguments that have never been presented to the during the prosecution.

The examiner can present new arguments for the appeal only if the applicant allows him to do so. Therefore it is not a matter of right. It is only by the grace of the applicant.

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.

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.

Now that being said, does that mean I am not going to present new arguments.... You bet you bottom dollar I am.


Title: Re: BPAI Appeal - new arguments
Post by wallflower on Aug 18th, 2006, 9:06am
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?

Title: Re: BPAI Appeal - new arguments
Post by Isaac on Aug 18th, 2006, 9:08am

on 08/18/06 at 08:57:53, 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.


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.  


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.


Title: Re: BPAI Appeal - new arguments
Post by Isaac on Aug 18th, 2006, 12:13pm

on 08/18/06 at 08:57:53, 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.


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.

Title: Re: BPAI Appeal - new arguments
Post by dab2d on Aug 18th, 2006, 12:24pm
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.




Title: Re: BPAI Appeal - new arguments
Post by dab2d on Aug 18th, 2006, 12:30pm

on 08/18/06 at 12:13:34, 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.



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.


Title: Re: BPAI Appeal - new arguments
Post by wallflower on Aug 18th, 2006, 1:43pm

on 08/18/06 at 12:24:50, dab2d wrote:
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).

I think final office action practice can be taxing.  I feel like many times my response after final gets only a glance, which is frustrating.  But when I present those same arguments in an appeal brief, I had numerous instances where the case was allowed or reopened for prosecution.

Title: Re: BPAI Appeal - new arguments
Post by Isaac on Aug 18th, 2006, 1:54pm

on 08/18/06 at 12:24:50, dab2d wrote:
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.


Isn't going to the board the applicant's choice anyways.  After all, the Applicant can elect to file an RCE rather than go to the board (under current rules) even after filing a NOA.   Why is it a problem that the Examiner cannot force the case to go to the board.   Is it really just the possible loss of the RCE count that seems unfair?   Is that something that the applicant ought to worry about after having paid an appeal fee?

Title: Re: BPAI Appeal - new arguments
Post by dab2d on Aug 18th, 2006, 2:21pm

on 08/18/06 at 13:43:56, wallflower wrote:
I think final office action practice can be taxing.  I feel like many times my response after final gets only a glance, which is frustrating.  But when I present those same arguments in an appeal brief, I had numerous instances where the case was allowed or reopened for prosecution.



File an RCE and you might get the same results without paying for the appeal.

Title: Re: BPAI Appeal - new arguments
Post by dab2d on Aug 18th, 2006, 2:33pm

on 08/18/06 at 13:54:23, Isaac wrote:
Isn't going to the board the applicant's choice anyways.  After all, the Applicant can elect to file an RCE rather than go to the board (under current rules) even after filing a NOA.   Why is it a problem that the Examiner cannot force the case to go to the board.   Is it really just the possible loss of the RCE count that seems unfair?   Is that something that the applicant ought to worry about after having paid an appeal fee?



It is the applicants choice, they pay the fee, and the office makes the rules. However, I still think everyone is best served with an interview and an RCE.

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. That in my opinion allows the applicant to be sloppy, while holding the examiner to a different standard of work.

What is unfair is an applicant running to the board with a new argument that could have been made before that point (not talking about a situation where it is the first time the argument could have been made). It waste everyone's time and it could have been avoided if the applicant had done their job in the first place.

I am just saying that if the Attny. is allowed to screw up during the prosecution, but clean up his mess in an appeal. The Examiner should be able to do the same without the permission of the applicant.  

Title: Re: BPAI Appeal - new arguments
Post by Isaac on Aug 18th, 2006, 2:34pm

on 08/18/06 at 14:21:37, dab2d wrote:
File an RCE and you might get the same results without paying for the appeal.


If you file an RCE with the same arguments and no amendment the result would likely be a second final.   So how does the applicant get the same result of having his old arguments reconsidered by filing an RCE rather than an appeal.  

Title: Re: BPAI Appeal - new arguments
Post by Isaac on Aug 18th, 2006, 2:40pm

on 08/18/06 at 14:33:31, 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.



Title: Re: BPAI Appeal - new arguments
Post by dab2d on Aug 18th, 2006, 3:06pm
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.

Title: Re: BPAI Appeal - new arguments
Post by dab2d on Aug 18th, 2006, 3:14pm

on 08/18/06 at 14:40:30, 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.




Title: Re: BPAI Appeal - new arguments
Post by dab2d on Aug 18th, 2006, 3:26pm
Out for the weekend.... it has been educational.

Have a good one.

Title: Re: BPAI Appeal - new arguments
Post by Isaac on Aug 18th, 2006, 4:04pm

on 08/18/06 at 15:14:20, 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.  


Title: Re: BPAI Appeal Brief Format
Post by LThom on Dec 28th, 2007, 10:21am
Anyone have a good link for format requirements for BPAI briefs--particularly regarding page limits, if there are any?

Having been through the rules and MPEP 1200 I don't see that information anywhere.

Thanks

Title: Re: BPAI Appeal Brief Format
Post by Isaac on Dec 28th, 2007, 10:38am

on 12/28/07 at 10:21:10, LThom wrote:
Anyone have a good link for format requirements for BPAI briefs--particularly regarding page limits, if there are any?

Having been through the rules and MPEP 1200 I don't see that information anywhere.

Thanks


There are no page limits in the current rules.


Title: Re: BPAI Appeal - new arguments
Post by bcapehart on Dec 28th, 2007, 11:57am
LT -

37 CFR 41 sets out the requirements for a brief.  Also, to find a "format go-by," you could look at briefs available on the PTO's databases.  Check the BPAI's Final Decisions database to see what new cases have been decided, copy the s/n for any newly decided case, then search the PAIR system for that matter.  You should be able to see the documents that have been filed, including the appeal brief.  This should give you a "go-by" for the format.  (I ran this type of search in about 3-5 minutes and located s/n 10930518.  It is a matter where a 103 rejection was reversed)

Best of luck,
Brent



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