AF amendments and appeals

[Obviously]

Any thoughts on this hypo would be appreciated:

An AF amendment is filed that merely wraps up a dependent claim.  The examiner issues an AA arguing that the amendment raises new issues that require further consideration and search and does not enter the amendment.  The case is ripe for appeal other than the fact that the amendment is not entered.  What can be done other than filing an RCE.

Clearly, the examiner has no legitimate basis for not entering the amendment -- he should have properly examined the added feature when it was in a dependent claim. 

[JimIvey]

Usually, there's a checkbox on the AA that indicates whether the amendment would be entered upon filing of a Notice of Appeal -- or something to that effect.

There's also a section in the Appeal Brief that describes the status of any amendments submitted after final.  I think you can mention there that the amendment merely recasts a dependent claim as an independent claim and makes no substantive changes to the claim.

And, on appeal, you still argue the merits of the claim -- whether dependent or independent.  So, it really doesn't matter whether the amendment is entered.  If the claim is found allowable after appeal but the amendment is not entered, you should be given an opportunity to amend the claim at that time.

Regards.

[ChrisWhewell]

Any thoughts on this hypo would be appreciated:

An AF amendment is filed that merely wraps up a dependent claim.  The examiner issues an AA arguing that the amendment raises new issues that require further consideration and search and does not enter the amendment.  The case is ripe for appeal other than the fact that the amendment is not entered.  What can be done other than filing an RCE.

Clearly, the examiner has no legitimate basis for not entering the amendment -- he should have properly examined the added feature when it was in a dependent claim. 

It might help if you have basis to argue that if entered, the amendment would put the case or claim in better form for appeal than were it not entered and brief explanation why no further searching is necessary.

[klaviernista]

An AF amendment is filed that merely wraps up a dependent claim. 

What exactly do you mean by "wraps up a dependent claim."  Do you mean that a dependent claim was amended, or that a dependent claim was incorporated into a base independent claim?

If it is the latter, the Examiner's basis for not entering the amendment is that while the amended base claim recites a combination previously considered, the remaining dependent claims present a new combination that was not previously considered and requires further search.  See the example below.  Of course, if the incorporated dependent claim was previously indicated allowable, the Examiner's position would not be proper.

Example:

Claims 1-3 are pending.  Claim 1 is independent, claim 2 depends on claim 1, and claim 3 depends on claim 1.  The examiner twice rejects claims 1-3, with the second action being final.  In an after final amendment, the applicant proposes to amend claim 1 to incorporate the elements of claim 3.  The examiner refuses to enter the amendment, saying that it raises new issues for consideration.  Is the examiner's action proper"?  Yes!  While claim 1 recites an old combination (essentially previoulsy claim 3), claim 2 now recites a combination of elements (original claim 3 + original claim 2) that was not previously considered and requires urther search and/or consideration.

[Obviously]

The base independent claim was amended to incorporate the features of a dependent claim, which was canceled.  In the OA, both claims were rejected in view of the same bs reference combination.  The AF amendment was made to strengthen the argument for patentability and to avoid having to separately argue the independent and dependent on appeal.

I recognize the point regarding new combinations of features vis-a-vis the remaining dependent claims, but this is clearly an examiner attempting to force an RCE rather than an appeal to extort another count for himself, especially b/c he knows everyone is rushing to file their RCEs by Nov 15 when the new count and docketing procedures go into effect.

I am just going to file the appeal and argue the claims separately.  He will not get an easy count and he will be forced to answer an even longer brief.

[klaviernista]

I recognize the point regarding new combinations of features vis-a-vis the remaining dependent claims, but this is clearly an examiner attempting to force an RCE rather than an appeal to extort another count for himself, especially b/c he knows everyone is rushing to file their RCEs by Nov 15 when the new count and docketing procedures go into effect.

What facts lead you to beleive that the Examiner is gaming the system as opposed to acting in accordance with PTo procedure?

I am just going to file the appeal and argue the claims separately.  He will not get an easy count and he will be forced to answer an even longer brief.

Probably a good idea.  The only other options you have at this point are: 1) file a continuing app to maintain pendency of the subject matter; 2) file an RCE; 3) file a supplemental amendment/response after final rejection; 4) file a notice of appeal (with or without an appeal brief or request for pre appeal brief review); or 5) abandon the application.

[JimIvey]

What facts lead you to beleive that the Examiner is gaming the system as opposed to acting in accordance with PTo procedure?

I'll take a stab at that. 

1. If the sole amendment is recasting a dependent claim as an independent claim, there are no new limitations that the examiner must search. 

Yes, if any other claims depend on the newly independent claim, there might be new combinations that haven't been searched.  To that, I have 2 thoughts.

First, somewhere in the MPEP, examiners are instructed to glean from the specification what the applicant might do in response to a rejection and search for limitations and/or combinations the applicant might be likely to make -- to reduce the number of iterations of examination.  So, really minor changes, even substantive ones, shouldn't require extra work if the letter of the MPEP were followed during examination.

Second, my unscientific survey of Office Actions over the last 18 years says that, particularly in recent years, that any real effort or thought toward establishing obviousness of any combination of any teachings appears in 5-10% of all Office Actions.  I typically see some arbitrary and perhaps imagined benefit from the combination.  That's it -- not even the perfunctory allegation that the benefit was known to those of ordinary skill in the art(s) at the time the invention was made, let alone some showing that the benefit is actually real.  I've even had an examiner recently inform me that the combined references don't even have to be capable of actual physical combination and use together -- just that they provide some conceptual framework in which the ordinarily skilled artisan would think, "Yeah, those could maybe work together somehow."

So, if all an examiner has to do is take the current inventory of teachings and clip them together like Legos, there's no need for a new search.

I've even had an examiner agree to remove a 102(e) rejection after final if I submit a particular amendment.  When I did, he refused to enter it, saying it would require a new search.  His supervisor (also present at the interview and witness to the agreement) supported that.  So, apparently, with the 102(e) rejection (the only grounds for rejection at the time) removed, the case should be allowed, right?  Nope.  After final, not rejected, not allowed.

2.  The examiner could easily suggest an examiner's amendment to cancel all claims depending on the amended claim.  I suspect that never happens because allowing a case is very difficult for the examiner and an RCE is rather helpful to the examiner.

I would go so far as to say that "gaming" after final practice is a pervasive part of USPTO patent application examining culture and has been for many, many years.  At the same time, my arguments aren't being taken seriously until I file a Pre-Appeal Brief Review request anyway, so none of this affects my practice much as I try to get to PABR and the appeal process as quickly as possible.

Regards.

[dablueman]

First, somewhere in the MPEP, examiners are instructed to glean from the specification what the applicant might do in response to a rejection and search for limitations and/or combinations the applicant might be likely to make -- to reduce the number of iterations of examination.  So, really minor changes, even substantive ones, shouldn't require extra work if the letter of the MPEP were followed during examination.

I'd be curious to know where in the MPEP examiners are instructed to make guesses about what an applicant might do in response to a rejection. The closest I know of is 904, but that specifically states "the first search should be such that the examiner need not ordinarily make a second search of the prior art, unless necessitated by amendments to the claims by the applicant in the first reply." It would be highly inefficient to search for mere possibilities based on guesses of how the applicant might respond.

[mk1023]

MPEP 706.07(a)

A second or any subsequent action on the merits in any application or patent involved in reexamination proceedings should not be made final if it includes a rejection, on prior art not of record, of any claim amended to include limitations which should reasonably have been expected to be claimed. See  MPEP § 904 et seq. **>However, note that an examiner cannot be expected to foresee whether or how an applicant will amend a claim to overcome a rejection except in very limited circumstances (e.g., where the examiner suggests how applicant can overcome a rejection under 35 U.S.C.  112, second paragraph)<.

Sentence following the bold part makes the whole thing meaningless

[JustAnotherExaminer]

What facts lead you to beleive that the Examiner is gaming the system as opposed to acting in accordance with PTo procedure?

I've even had an examiner recently inform me that the combined references don't even have to be capable of actual physical combination and use together -- just that they provide some conceptual framework in which the ordinarily skilled artisan would think, "Yeah, those could maybe work together somehow."

90% of my combinations aren't physical combinations, they're conceptual functionality additions or changes.  All depends on the tech area though.  I could imagine a mechanical area might need to have them physically combinable.

[Isaac]

Sentence following the bold part makes the whole thing meaningless

That sentence is a fairly recent revision to the MPEP.

[klaviernista]

MPEP 706.07(a)

A second or any subsequent action on the merits in any application or patent involved in reexamination proceedings should not be made final if it includes a rejection, on prior art not of record, of any claim amended to include limitations which should reasonably have been expected to be claimed. See  MPEP § 904 et seq. **>However, note that an examiner cannot be expected to foresee whether or how an applicant will amend a claim to overcome a rejection except in very limited circumstances (e.g., where the examiner suggests how applicant can overcome a rejection under 35 U.S.C.  112, second paragraph).

(italics added by Klav)

While MPEP 706.07(a) does indicate that an examiner should anticipate possible changes that an applicant may make, it does not require them to do so in the statutory time period following an issued final rejection.  Indeed, to my understanding, that section of the MPEP has nothing whatsoever to do with after final practice, but rather explains when an examiner may make a second or subsequent action final.  

After final practice is a tricky animal for examiners.  The current count system gives them almost no incentive to consider amendments after final rejection, unless such an amendment will clearly and unambiguously render a case allowable.  Current PTO policy makes that standard almost impossible to meet, and provides examiners with several incentives to refuse to enter an after final amendment absent an RCE.  This is precisely why (when I was in private practice), I almost never counseled a client to file an amendment after final.  It is simply a waste of time, at least  until the rules and/or PTO policy change.

That is not to say that after final  practice as a whole is a waste of time.  Responses after final rejection (w/o claim amendments) remain quite useful.

[ChrisWhewell]

  That is not to say that after final  practice as a whole is a waste of time.  Responses after final rejection (w/o claim amendments) remain quite useful.

Agreed on all that, that MPEP section addresses but one instance when an action shouldn't be made final.

Had a recent case in which a final was received, but allowable matter in the form of claims only objected to was present.  Could have filed a con and abandoned parent case, but client elected to do an after-final amendment overcoming all objections relating to claims being dependent on a rejected base claim, etc..  Filed the amendment after final and the next thing we received was a Notice of Allowance.  Sometimes one has to take what they can get and in that instance the narrower claims do in fact cover the product being sold.  A con was then filed, since it was clear broader coverage can probably be obtained but at least now, client can put a patent number on the product.  If the con is allowed, then more maintenance fees may be due in the future, but if the aft final amendment weren't made, there would have been no guarantee that a patent would issue on the con, although I think there should be.  Every amendment after final I've filed that overcomes such objections (constrasted to rejections) by incorporation of allowed dep claims into a rejected base claim has resulted in a N of A.

[DogDayPM 9er9er9er]

...Sometimes one has to take what they can get and in that instance the narrower claims do in fact cover the product being sold.  A con was then filed, since it was clear broader coverage can probably be obtained but at least now, client can put a patent number on the product.  If the con is allowed, then more maintenance fees may be due in the future, but if the aft final amendment weren't made, there would have been no guarantee that a patent would issue on the con, although I think there should be.  Every amendment after final I've filed that overcomes such objections (constrasted to rejections) by incorporation of allowed dep claims into a rejected base claim has resulted in a N of A.

In-house perspective is also to get the bird in the hand then file the continuation to get the fatter bird in the bush if deserved in view of the art.  We can always dump the too-narrow patent later (but seldom do). 

But I wish I could also agree that in my cases each AF amendment making the objected dependent an independent resulted in allowance.  Maybe 70% of the time.  And even if I get the notice of allowance sometimes it is followed by a notice withdrawing the allowance. 

And in several cases, having made it far enough to get the issue fee paid, I've subsequently gotten a notice that the Office is withdrawing the app from issue and putting it back into prosecution.  In those cases it's always been very comforting to the client to know we can request refund of the issue fee.  Yeah. 

[ChrisWhewell]

I've never experienced either but suppose it could be a good thing, if there were art-related questions it would be good to answer them now instead of having to file for a re-exam; I might be inclined to thank the examiner. Is it PTO policy that once such a decision is made internally, a phone call is made to the practitioner of the case promptly before the papers are even mailed ?  If not, that could be an improvement as I generally like to know ASAP changes on stuff like that.