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[jc4patents]

   In responding to an initial Office Action, it became apparent that applicant's structure
patentably distinguished over cited art but, in order to express the differences, it was
necessary to give a reference number and a name to an "outer frame wall" that connects other named
and described elements. This wall was in all the filed drawings but not specifically mentioned
in the spec and did not have a reference number attached to it in the dwgs.
   In a final OA, the Examiner enters a 112 rejection stating that this is a new element not
previously disclosed and it "changes the scope of previous limitations".
   MPEP 608.04(a) states "matter not in the original ---- or drawings is usually new matter"

   Any suggestions as to a response to this Final OA ? This structure (outer frame wall) is really
key to distinguishing over the cited art.

[JD]

Try MPEP 2163.06:  Stated another way, information contained in any one of the specification, claims or drawings of the application as filed may be added to any other part of the application without introducing new matter.

In other words, anything described in the text as originally filed may be added to the drawings, and anything in the drawings as originally filed may be added to the text.  Assuming of course you don't "add" anything.  For example, if you have to claim that the wall is made of a titanium alloy, you're not going to be able to do that.  But if the wall was shown in the drawings, you are permitted to add to the text a sentence along the lines of "A wall 100 extends..." (or whatever).

If you argue that the wall provides some result that distinguishes over the prior art, and the examiner gives you grief that you're arguing benefits/advantages not disclosed in the spec as originally filed, just come back with the quote from In re Chu in MPEP 716.02(f).

Good luck.

[JD]

"...the Examiner enters a 112 rejection stating that this is a new element not
previously disclosed and it 'changes the scope of previous limitations'."

BTW, this is a completely bullsh!t rejection.  There's no such grounds under 112.  If the claim is supported and the app enables one to make and use the claimed invention, no problem under 1st paragraph.  If the claim particularly points out and distinctly claims the subject matter applicant regards as the invention, then no problem under 2nd paragraph.

"scope of the previous limitations"!!! Huh?  Who gives a rat's behind about the "scope of the previous limitations"?  What does the claim, as it's currently written, recite?  Is it enabled?  Is it supported?  Does it particularly point out and distinctly claim the subject matter regarded as the invention?  If so, why is it being rejected?

Don't sugar coat your response.  With as much decorum and courtesy as you can muster, tell the examiner what an idiot he/she is.

[jc4patents]

JD -----

   Thanks - in response to the initial OA, we added reference number 37 to FIG. 10, and amended a paragraph of the specification
to recited the following:

      "As shown in FIG. 10, an outer frame wall 37 is outwardly spaced from the aperture wall 31 to thereby communicate between the first and second frame sides 23 and 24 and bound the frame 22."

    Elements 31, 23, 24 and 22 were all referenced in the original spec.

    An independent claim was then amended to recite:

   "an outer frame wall outwardly spaced from said aperture wall to communicate between said first and second frame sides and bound said frame"

    In 19 years of practice, I have never found it necessary to go to the Appeal Board. Instead, I have often filed an RCE and that
has always been successful. In this case, however, I doubt there is any way of rephrasing our claims so that the Examiner would
probably just reject again in an RCE.

    Any suggestions other than appeal ?

[vman11]

How about requesting an interview?

http://www.uspto.gov/web/offices/pac/mpep/documents/0700_714_12.htm

[jc4patents]

vman11 -------

    thank you - also, is the pre-appeal brief conference pilot program still offered
as an option ?

[JD]

An interview may help.  Point out that the wall is shown in the drawings and point out MPEP 2163.06.  If the examiner refuses to drop the rejection, pre-appeal is an option.  If the examiner is a primary the other pre-appeal conferees may talk some sense into him/her.  If the examiner is a junior and a SPE/primary is signing the action, one of those useless QAS's may sit in on the conference and talk some sense into both of them.  (That's a long shot though as the vast majority of these QAS's are utterly useless.  And don't know anything more than your run of the mill examiner.)

Has the examiner addressed the "new" wall added to the claims.  Plenty of MPEP sections require the examiner to address the feature/limitation even if it is regarded as lacking written description support or to be new matter.  See MPEP 707.07(g), 2143.03, and the aforementioned 2163.06.  So if the examiner didn't address the feature, that is grounds for traversing whatever art rejection was made and asking for a new non-final OA.

You need to try to figure out how to get the examiner to indicate whether the new feature/limitation makes the claim allowable if the 112 rejection is overcome.

For example, point out in your response that the examiner is required to address the feature/limitation, even if it is regarded as lacking support/new matter.  If the examiner comes back with just a 112 rejection, that will indicate that he/she has no art rejection for a claim with that feature/limitation.  Then all you have to do is overcome the 112.  That may require an appeal.  But don't let the examiner get away without considering the feature/limitation you added.

[vman11]

http://www.uspto.gov/web/patents/patog/week53/OG/TOCCN/item-227.htm
(227)  December 30, 2008

(227)      New Pre-Appeal Brief Conference Pilot Program

Effective Date: Effective upon publication of this notice

   This new program offers applicants an avenue to request that a panel of
examiners formally review the legal and factual basis of the rejections in
their application prior to the filing of an appeal brief. Effective
immediately, the USPTO is offering applicants an optional procedure to
review the examiner's rejection prior to the actual filing of an appeal
brief. The program is intended to spare applicants the added time and
expense of preparing an appeal brief if a panel review determines an
application is not in condition for appeal.  Although this procedure will
not be appropriate in every appealed application, in the proper situations
it can save both the resources of the applicant and the Office. Applicants
continue to have available to them the normal practice and procedures
already in effect under Part 41 of the Title 37 of the Code of Federal
Regulations relating to appeals and practice before the Board of Patent
Appeals and Interferences.

Contents
   1. General Provisions
   2. Conditions Necessary to Request a Panel Review
   3. Content of Request
   4. Content of Remarks or Arguments
   5. USPTO Consideration of the Request
   6. Format of Panel Decision
   7. Time Periods Before/After a Panel Decision
   8. Administrative Matters

1. General Provisions:

. What is this program?

   Under the current practice every applicant whose claims have been twice
rejected may appeal the examiner's decision to the Board of Patent Appeals
and Interferences.  To do so, the applicant first files a notice of appeal
accompanied by the appropriate fee i within the appropriate time period ii.
Within two months from the date of the filing of the notice of appeal,
applicant must file an appeal brief accompanied by the appropriate fee iii.
Applicants may buy extensions of time for filing the appeal brief.

   This pilot program offers applicants an opportunity to request a review
of identified matters on appeal employing an appeal conference currently
employed in the Office, but prior to the filing of an appeal brief.  The
goals of the program are (1) to identify the presence or absence of clearly
improper rejections based upon error(s) in facts, or (2) to identify the
omission or presence of essential elements required to establish a prima
facie rejection.

. Who can use this program?

   Any applicant who has filed a notice of appeal and who wants a panel of
experienced examiners to perform a detailed review of appealable issues
within a set period of time.

. How to decide if you should request this panel review?

   If the applicant feels the rejections of record are clearly not proper
and are without basis, then filing this request may result in a panel
decision that eliminates the need to file an appeal brief. This should be
based upon a clear legal or factual deficiency in the rejections rather than
an interpretation of the claims or prior art teachings. The latter is more
appropriate for the traditional appeal process currently employed by
applicants.

So on and so forth ....

[jc4patents]

JD and vman11 -------

   Thanks for your wise counsel - I deeply appreciate it. Upon reflection, I believe I will:
        a) in a telephone interview, try to convince the Examiner that the frame wall is not new matter; and
        b) file an RCE and write new claims with the frame wall or (if a above fails) write new claims without the
                  frame wall.

    I shy away from an appeal because of the time delay and the cost.

    With an RCE, the Examiner gets his extra count and will hopefully be receptive to the new claims that
            were produced because of (or in spite of) his new matter rejection.

[JimIvey]

    In 19 years of practice, I have never found it necessary to go to the Appeal Board. Instead, I have often filed an RCE and that has always been successful. In this case, however, I doubt there is any way of rephrasing our claims so that the Examiner would probably just reject again in an RCE.

I find that amazing!  I'm not being critical; it's just so different from my experience (only 18 years) -- particularly recent experience.  I wonder if it's just the computer-related arts that are completely dysfunctional....

I don't get anything allowed without going through the BPAI.  And, I find interviews useless because any agreements reached there are typically reneged.

I still use the Pre-Appeal Brief Review process.  I find it moderately useful. 

As for the amended language:

"As shown in FIG. 10, an outer frame wall 37 is outwardly spaced from the aperture wall 31 to thereby communicate between the first and second frame sides 23 and 24 and bound the frame 22."

I assume you added the entire sentence.  I would think you'd have to explicitly argue that each and every quality of outer frame wall 37 mentioned in the sentence is clearly shown somewhere in the application as originally filed.  I would expect the examiner to balk at "outwardly spaced" and "to thereby communicate between" unless these qualities are clear in the drawings or elsewhere in the application as filed and you'd have to make that very clear on the record.

Regards.

[jc4patents]

    I have called and left a message requesting a discussion with the Examiner - after
I looked at the Final OA more carefully, I put together a fax that:
     a) carefully explained that the sentence added to the spec and claims (needed to help redraft the claims
            to distinguish over the single reference) only recited the physical relationships in one of the
            drawing figures and therefore did not add new material; and
     b) showed that the Examiner overlooked at least 2 limitations in the independent claims that are
             taught away from by the single reference so that that reference cannot support a 103(a) rejection.

    I then left another message informing the Examiner of my fax and again asking that we discuss it
after he has had time to read it.

    I assume that after issuing a final OA, the Examiner has no incentive for spending any more time on the application
 and that it may be difficult to get him to discuss, let alone alter, his final action. It will be somewhat difficult
to follow the RCE path, since there is nothing to add to the existing claims and if I don't significantly
alter them, they will be rejected out of hand. If I don't get a response, I will contact his supervisor.

    Stay tuned.

[JimIvey]

Back when examiners could allow cases, your approach had a chance of working.  If you can get an allowance, an allowance was easier than a Examiner's Answer in appeal.

More recently, an examiner explained that she would have had to convene two separate meetings of 3 of her superiors (a different group for each meeting) to allow a case.  And, she was signing her own papers at that point.

Again, it might just be my technology groups, but allowing an application is no longer easy and I'm seeing extraordinary effort in rejecting all applications at nearly all costs.

But, best of luck to you.  My bet is that an RCE is in your future.

Regards.