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[khazzah]

I've appealed on non-final before, and I've no doubt that the rules provide for this. This time I want to appeal on non-final and also make claim amendments in response to the non-final. The amendments clarify the meaning and better distinguish, so I want the amendments. But I don't want to make claim amendments and arguments in a response, then wait for another OA in order to appeal -- I'm tired of arguing with this Examiner and want to get to the BPAI as soon as possible.

I don't see any rule prohibiting simultaneous Notice of Appeal plus Amendments in Response to Non-Final, though I realize it's an unusual move. 

Can anyone show me where the rules prohibit this? Anyone else tried this unusual strategy?

I'd also be interested in hearing reasons why anyone thinks this is a bad strategy, even if permissible. 

[Isaac]

I've appealed on non-final before, and I've no doubt that the rules provide for this. This time I want to appeal on non-final and also make claim amendments in response to the non-final. The amendments clarify the meaning and better distinguish, so I want the amendments. But I don't want to make claim amendments and arguments in a response, then wait for another OA in order to appeal -- I'm tired of arguing with this Examiner and want to get to the BPAI as soon as possible.

Are you sure the examiner won't allow the amended claims?   Are the amended claims twice rejected despite the fact that the examiner has not seen the amendments even once?   The latter question is the one that might reflect on ripeness for appeal.
 

[klaviernista]

Did some digging over the weekend.  Only thing I could find in the MPEP that appears to specifically address the situation the OP posed (filing a notice of appeal on the same day as an amendment under 1.111) is a blurb stating, "Any amendment, affidavit or other evidence filed after the mailing of a non-final Office action and on the same date as the notice of appeal will be treated by the Office as being filed prior to the notice of appeal and treated under 37 CFR 1.111."  MPEP 1206(I).

In view of that statement, I believe that 37 C.F.R. 1.112 explains how the PTO should act in response to the action proposed by the OP.

"After reply by applicant or patent owner (§ 1.111 or § 1.945) to a non-final action and any comments by an inter partes reexamination requester (§ 1.947), the application or the patent under reexamination will be reconsidered and again examined. The applicant, or in the case of a reexamination proceeding the patent owner and any third party requester, will be notified if claims are rejected, objections or requirements made, or decisions favorable to patentability are made, in the same manner as after the first examination (§ 1.104). Applicant or patent owner may reply to such Office action in the same manner provided in § 1.111 or § 1.945, with or without amendment, unless such Office action indicates that it is made final (§ 1.113) or an appeal (§ 41.31 of this title) has been taken (§ 1.116), or in an inter partes reexamination, that it is an action closing prosecution (§ 1.949) or a right of appeal notice (§ 1.953)."  37 C.F.R. 1.112.

In sum, provided the other requirements for filing a notice of appeal have been met, I do not see anything in the rules or MPEP preventing the OP from taking the action proposed.  That said, I don't particularly see the benefit of taking a case up on appeal in the manner proposed.  At a minimum, both the applicant's position and the Office's position would be unsettled at the time the Notice of Appeal was filed, which is generally not a favorable platform from which to appeal.  To use a term more adequately suited to describe certian appeals to the SCOTUS, the capplication in the OP's scenario would not be "ripe" for appeal.

[khazzah]

Placeholder . . . . further researching

Blast away!     I expect this to be a contoversial topic.

[khazzah]

Are you sure the examiner won't allow the amended claims?  Are the amended claims twice rejected despite the fact that the examiner has not seen the amendments even once?   The latter question is the one that might reflect on ripeness for appeal.

Ex parte Lemoine clearly says that you don't have to wait until a particular claim is "twice rejected" to appeal a rejection of that claim: "Under our interpretation, so long as the applicant has twice been denied a patent, an appeal may be filed." http://www.uspto.gov/ip/boards/bpai/decisions/prec/fd940126.pdf That is, you can add a claim in the first OA, get a second rejection (final or not), and appeal the rejection of both the original claims and the new one.

[I know not everyone here likes BPAI case law, but it's definitely the most on point.]

But I think you've honed in on the same thing that the Examiner, and maybe even the PTO in general, will focus on:  "amendments not yet examined". Yet I don't see anything in the statute or CFR that says I can't appeal [a rejection of] a claim that includes an amendment that has not yet been examined.

[Examinerguy]

Twice rejected unfortunately for examiners doesn't mean that a claim has to be twice rejected. The invention (claims as a whole) must be twice rejected (I got in a lengthy discussion as a junior with a QAS on this very topic). If you are making amendments that change in any way the scope of the invention along with your appeal, the examiner does not have to enter those amendments for the purpose of the appeal.

[khazzah]

If you are making amendments that change in any way the scope of the invention along with your appeal, the examiner does not have to enter those amendments for the purpose of the appeal.

Bingo. You're not likely to get an examiner to enter your amendments. The only way I'm entering them is if you're just folding a dependent claim into the independent, or your amendment makes it 10x easier for me to win the appeal. If it's the latter then the case will likely be remanded by the board anyway with a spanking for not fully developing the record before going to appeal (i.e. not searching the new claims).

Certainly I respect your sense of what a typical Examiner will do -- but I don't see where the MPEP gives the Examiner any discretion in entering an amendment after a non-final, even when coupled with a Notice of Appeal. The only discretionary entry I know about is at Final.

I do think that Ex parte Lemoine controls here. Lemoine was all about the right to appeal an application including a claim that has been twice rejected, rather than the right to appeal a particular claim that was twice rejected:

We conclude that "claims" in § 134 should be construed consistently with its use in § 132 to mean "claims for a patent" rather than particular "claims of an application."

Khazzah, what you essentially want to do is skip discover and trial and head directly to appeal.

Nah, I haven't skipped discovery and trial. I've had far too much time at trial before the fact finder. I want an interlocutory appeal. [OK, maybe I'm stretching the analogy here.]

While I can understand the frustration, you're not going to be able to do it (even if there isn't a rule, regulation, or code governing it).

Gotcha. I do appreciate the input, Examinerguy and dablueman. I suspected that many Examiners, and yes, even the BPAI, would react this way. If only I had a client with the time and money to take this to the BPAI and/or the director of Petitions, and then to the Federal Circuit ... you know, "on principle".

[ParadiseIP]

Although I agree with the consensus that you can take this approach, there are a couple of questions that I would ask myself before doing it:
1.   Does your client agree to dispense with the "free" chance to amend and present arguments to the examiner?  Going to appeal is usually a strategic decision that should be cleared by the client, particularly if there are other options available.
2.   Since you appear to agree that the current rejections require amendment to overcome, why are you so sure that the examiner won't agree that the amendments advance the prosecution?  At the very least, the examiner is likely to change the rejections and you will have the chance to see the new rejections that you will have to address in the appeal.
3.   Is this a case that is better served using the pre-appeal brief process?  If all you want is a fresh set of eyes, this will do the trick at much lower cost.
4.   Even if you are absolutely sure that you are going to appeal, why not take this opportunity to make the amendments and give the examiner a chance to check for any new matter or 112 type rejections that can be easily corrected in a response to the next office action?  Better to have all your ducks in a row before heading off to an appeal.   

[khazzah]

Although I agree with the consensus that you can take this approach, there are a couple of questions that I would ask myself before doing it:

I don't see any consensus.

2.   Since you appear to agree that the current rejections require amendment to overcome,

i don't see anything that I said that implies the current rejections require amendment. I characterized the amendments as "clarify the meaning and better distinguish". If I have 4 features, and good arguments that 3 of the features are not taught, then (by definition) I don't think I need amendment to overcome -- even if I want to amend the 4th, say, for infringement rather than patentability reasons.

why are you so sure that the examiner won't agree that the amendments advance the prosecution?  At the very least, the examiner is likely to change the rejections and you will have the chance to see the new rejections that you will have to address in the appeal.

Saying the Examiner is "likely to change the rejections" means you think the Examiner is actually paying attention to my claim language and/or arguments. Though you have no way of knowing this, in this case, the Examiner has done a crappy job of rejecting the claims so far. The amendments I have in mind do not add new features. Therefore, I have no reason to believe he's going to budge.

3.   Is this a case that is better served using the pre-appeal brief process?  If all you want is a fresh set of eyes, this will do the trick at much lower cost.

I wish I *knew* if this case was a good one for the PABC.

In my experience, PABC is a crap shoot. I've had a number of cases of *very clear error* where the PABC said "go to appeal". It's not always a fresh set of eyes. In many cases, it's the Examiner, his boss (who already signed off on previous rejections), and *one* new pair of eyes.

My primary criteria for deciding PABC or no is no longer "how strong is my argument", it's "how much longer do I want to wait for appeal". If I'm willing to wait until 6-9 months, then I'll probably PABC.

4.   Even if you are absolutely sure that you are going to appeal, why not take this opportunity to make the amendments and give the examiner a chance to check for any new matter or 112 type rejections that can be easily corrected in a response to the next office action?  Better to have all your ducks in a row before heading off to an appeal.  

Why? I don't want to waste any more time. I want to appeal now. The only danger is that the Board will raise 112 or 101 rejections sua sponte AND not reach the prior art rejections. While that's always a theoretical possibility, in this case, I have no reason to think the Board will do so. BTW, if the Board raises 112 or 101 and does reach the prior art rejctions, then I can deal with the 112 or 101 later.

You know, the fact that some Examiners do add 112 and 101 rejections later in the case (when they could have done so earlier) is yet another reason to appeal early, thus reducing the Examiner's opportunity to add them late in the game.

ParadiseIP, looks like you and I differ in our prosecution style, but thanks for your comments.

BTW, I realize this particular thread may make it sound like I hate Examiners, but that's really not the case. I'm talking about one Examiner in one particular case. I do feel strongly that he has done a terrible job of examining, which is why I want to appeal ASAP.

Hopefully, the Examiners who read this board realize that it suffers from "selection bias" -- practitioners post here to get advice about problems they're having in prosecution. The very same practitioners may well have other cases that are going along fine, but they're not going to spend time posting "Wow, this Examiner did a great job".

[klaviernista]

Updated my placeholder post above.  For those who are interested, I had originally posted a gut response to the OP's proposal, but decided to erase it and further research over the weekend.  Wanted to make sure I had a solid grasp of how the rules and MPEP suggest that PTO should act in response to a notice of appeal filed in conjunction with a response to a non-final rejection.

[klaviernista]

Twice rejected unfortunately for examiners doesn't mean that a claim has to be twice rejected. The invention (claims as a whole) must be twice rejected (I got in a lengthy discussion as a junior with a QAS on this very topic). If you are making amendments that change in any way the scope of the invention along with your appeal, the examiner does not have to enter those amendments for the purpose of the appeal.

While your comment is correct with respect to amendments filed in response to a final rejection (and without an RCE), they are not correct with regards to amendments filed in response to a non-final rejection.

[klaviernista]

The only way I'm entering them is if you're just folding a dependent claim into the independent, or your amendment makes it 10x easier for me to win the appeal. If it's the latter then the case will likely be remanded by the board anyway with a spanking for not fully developing the record before going to appeal (i.e. not searching the new claims).

Except that in the situation posed by the OP, the amendment is submitted under 1.111, which means that the Office is obligated to enter it except in limited circumstances (non-compliant, non-responsive, etc.)

I'll tell you why it's a bad strategy, you'll be in effect doing another round of OAs before it gets to the board. . . ."

Your proposed prosecution timeline could happen, but I believe that an equally likely scenario is that the Office issues another OA in response to the amendment, at which time the case immediately goes to appeal.  Depending on the nature of the rejections, the applicant could be in a very uncomfortable situation, one where they are trying to address issues raised in the new OA in the Appeal Brief with arguments that were not previously presented to the examiner.  Indeed, if new grounds of rejection are presented in the OA, the applicant would be obligated to respond to them in the Appeal Brief to avoid dismissal of the appeal. While I do not believe that there is anything technically wrong with using ew arguments on appeal, the likely result will be that the board will remand the case to the examiner for further consideration, before considering the application on the merits.  As you noted, this will probably dealy the resolution of examination significantly.

[klaviernista]

Not really on point since under Lemoine the new claim had been rejected once. As much as some practitioners would want you can't just skip the examiner and go to the Board.

It is settled law/practice that once an application has been rejected twice, the applicant may appeal.  True, Lemoine's amended claims had been rejected once.  But the principal of the case is that the right to appeal matures when the application, not any specific claim, is rejected twice. 

Even if an examiner entered the amendment and it some how got by the TQAS and SPE in the pre-appeal conference it wouldn't get past the people that check the appeals and the case would likely be remanded to the examiner. The key here is that there has been no search on the new claims, no prior art discovered, no finding of fact, etc.

Except that the MPEP and 37 C.F.R. 1.112 appear to mandate that the Office is obligated to produce an Office action in response to an amendment filed under 1.111 in conjunction with a notice of appeal.  So there would be a "finding of fact" (if you can call the opinion of the Office a "fact") by the Office prior to the filing of an appeal brief.

Khazzah, what you essentially want to do is skip discover and trial and head directly to appeal. While I can understand the frustration, you're not going to be able to do it (even if there isn't a rule, regulation, or code governing it).

Now this I agree with, though for fundamentally different reasons.  No matter how long I think about it, I see a 90% plus chance that the application will get remanded to the examiner before it is substantively considered by the Board.  The only question in my mind is whether the remand will occur before or after the Appeal Brief is filed.

[Isaac]

While I do not beleive that there is anything technically wrong with using new arguments on appeal, the likely result will be that the board will remand the case to the examiner for further consideration, before considering the application on the merits.  As you noted, this will probably dealy the resolution of examination significantly.

Not only is there nothing technically wrong with using new arguments, the examiner has every opportunity to respond to those new arguments in the Examiner's answer.   I agree that it is not a good strategy to withhold arguments from the examiner during prosection, but any argument not presented in the appeal brief is waived.   I wouldn't hesitate to add a new argument that had not occured to me before the time of writing the appeal brief.   I also would not hesitate to separately argue a dependent claim even if I had not done so during prosection.

Is this a case that is better served using the pre-appeal brief process?  If all you want is a fresh set of eyes, this will do the trick at much lower cost.

Unfortunately, you have to file a notice of appeal in order to get a pre-appeal brief conference.   Yes it does save money if you don't have to file an appeal brief, but hopefully it does save some time...

[klaviernista]

Not only is there nothing technically wrong with using new arguments, the examiner has every opportunity to respond to those new arguments in the Examiner's answer.   I agree that it is not a good strategy to withhold arguments from the examiner during prosection, but any argument not presented in the appeal brief is waived.   I wouldn't hesitate to add a new argument that had not occured to me before the time of writing the appeal brief.   I also would not hesitate to separately argue a dependent claim even if I had not done so during prosection.

Totally agree.  But as you implied, it is better to lay all your cards on the table during substantive prosecution before appealing a case.  Every new argument presented on appeal is an invitation for the Board EDIT: or the examining corps. /EDIT to remand, which is not desirable given that the appeals process itself can take several years.