Appeal on non-final plus amend claims

[khazzah]

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.

Here's Klavernista's timeline.

t0:  2nd NFOA                           ; twice rejected, triggers my right to appeal
t1:  Amend + Notice of Appeal    ; exercise my right to appeal   
t2 = t1+2mos-1day: first FOA     ; Ex says final is triggered by my amendments
t3 = t1+2mos: Appeal Brief        ; 2-month clock for filing Appeal Brief

My thinking in my original post was that my Appeal Brief responds to rejections in 2nd NFOA, since that's the OA in play when I filed the NoA.

OK, so maybe the PTO doesn't interpret the rules the way I was thinking, and then my Brief must respond to arguments in the new OA.

But I don't see anything wrong -- in practice,  not just "technically" -- with responding to not-yet-responded-to arguments in an Appeal Brief. I do that all the time when I appeal on first final.

And I'm not sure why you think the Board would remand because my Appeal Brief contained not-yet-responded-to-arguments ("new arguments"). As I noted above, I've appealed a lot of cases on first final. Granted, none of them have been decided by the Board, so I don't know from personal experience whether new arguments are likely to result in a remand. But I don't recall seeing a single remand because of "new arguments".

But as you implied, it is better to lay all your cards on the table during substantive prosecution before appealing a case. 

I think you and I disagree on this basic point. If the Examiner presents what are really new arguments, then I'll file a regular response with arguments rather than an immediate appeal.

But if the Examiner shores up a crappy 102 that's missing 3 of 5 elements by switching to an equally crappy 103 that is missing 2 of 5 elements, I'll appeal that new OA and present 103 arguments for the first time in the Brief. In such a situation, I don't want to waste 6+ months of prosecution time waiting for a new OA that ignores my slam-dunk arguments to maintain the crappy 103.

[klaviernista]

I think you and I disagree on this basic point. If the Examiner presents what are really new arguments, then I'll file a regular response with arguments rather than an immediate appeal.

If you respond to a second non-final with amendments and a notice of appeal, you have effectively started the appeal process regardless of any action the Examiner may later take.  Are you saying that you would reopen prosecution if the Examiner presents "really" new arguments in response to your amendments?  If that is the case, why not just wait to file the notice of appeal until you receive the response from the Examiner in the first place?  If you file the notice of appeal, then reopen to file a new response, aren;t you just throwing the appeal fee out the window?

[klaviernista]

But I don't see anything wrong -- in practice,  not just "technically" -- with responding to not-yet-responded-to arguments in an Appeal Brief. I do that all the time when I appeal on first final.

And I'm not sure why you think the Board would remand because my Appeal Brief contained not-yet-responded-to-arguments ("new arguments"). As I noted above, I've appealed a lot of cases on first final. Granted, none of them have been decided by the Board, so I don't know from personal experience whether new arguments are likely to result in a remand. But I don't recall seeing a single remand because of "new arguments".

My point was not that you cannot submit new arguments on appeal.  Rather, it was to note that each new argument presented on appeal raises the possibility that prosecution will be reopened, either by the Examiner or the Board.  E.g., "[a]fter an appeal brief under 37 CFR 41.37 has been filed and the examiner has considered the issues on appeal, the examiner may: (A)   reopen prosecution to enter a new ground of rejection with approval from the supervisory patent examiner (see MPEP § 1207.04); (B) withdraw the final rejection and allow the application if the examiner determines that the rejections have been overcome and no new ground of rejection is appropriate; or (C)   maintain the appeal by conducting an appeal conference (MPEP § 1207.01) and draft an examiner's answer (MPEP § 1207.02). Any examiner's answer mailed on or after September 13, 2004 may include a new ground of rejection (MPEP § 1207.03).  In my experience, as  the number of new arguments presented in an appeal brief goes up, the greater the chance an examiner w(or the appeal confereees) will decide that a new ground of rejection and reopening of prosecution is necessary.  Similarly, the possibility that the board will remand a case for further consideration also (in my experience) increases as the number of new arguments increases. 

There is no hard a fast rule, and certainly no guarantee that new arguments will provike a remand.  I was just pointing out a trend I have seen in my practice over the years. 

[Isaac]

My point was not that you cannot submit new arguments on appeal.  Rather, it was to note that each new argument presented on appeal raises the possibility that prosecution will be reopened, either by the Examiner or the Board.

You cannot worry about the possibility that an examiner will reopen prosecution in response to new arguments.  The examiner should reopen prosecution anytime an argument is persuasive.   At the time of writing the appeal brief, it is too late to worry about whether arguments are new. 

Further, you often have no choice regarding using new arguments.  Any new examiner position that shows up in an Advisory Action, or in a non-final office action that you intend to appeal, must be addressed in your appeal brief.

[khazzah]

I think you and I disagree on this basic point. If the Examiner presents what are really new arguments, then I'll file a regular response with arguments rather than an immediate appeal.

If you respond to a second non-final with amendments and a notice of appeal, you have effectively started the appeal process regardless of any action the Examiner may later take.  Are you saying that you would reopen prosecution if the Examiner presents "really" new arguments in response to your amendments?  ?

Not exactly.

You pointed out that I need to respond to new grounds of rejection at some point, and cautioned against doing that in an appeal brief.

In response, I was trying to explain when I would respond to a new rejection with a response+args vs when I would an appeal. I said I'd appeal if the new rejection is crappy too. But I'd argue rather appeal if the rejection is decent.

Admittedly a tangent from my original post, in which I'd *already decided to appeal* because the rejection was crappy, but wanted to have my cake and eat it too by entering an amendment.

[khazzah]

...each new argument presented on appeal raises the possibility that prosecution will be reopened, either by the Examiner or the Board. 

In my experience, as  the number of new arguments presented in an appeal brief goes up, the greater the chance an examiner w(or the appeal confereees) will decide that a new ground of rejection and reopening of prosecution is necessary.  Similarly, the possibility that the board will remand a case for further consideration also (in my experience) increases as the number of new arguments increases. 

I agree with all you say. Seeing what you wrote, I can now succintly state the underlying reason that I appeal: the Examiner isn't listening, and the Appeal Brief is the only thing that gets his/her attention.

I don't want the conferees (either pre-Brief or post-Brief) to reopen prosecution upon the filing of my brief. I don't want the Board to remand. I want the Examiner to read my persuasive arguments and allow my claims. If I can't get that, I want a decision by the BPAI about the patentability of the claims on the art of record.

Unfortunately, I can't stop the Examiner from reopening pros and giving me an equally crappy new rejection. Nor can I stop the Board from remanding with the same result.

Under the current rules, I (sadly) consider it a small victory to get reopened prosecution. Occasionally I see a medium size victory: the next Office Action has a much stronger rejection.

Note that I wouldn't complain about reopened pros if my arguments in the Appeal Brief really were "new", because, yeah, I can see that the PTO must have the right to re-examine in that situation. But in many cases, my Appeal Brief has the same basic argument that my first response did. To me, it's fundamentally unfair that the Examiner is allowed to reopen in such a case.

[khazzah]

Similarly, the possibility that the board will remand a case for further consideration also (in my experience) increases as the number of new arguments increases. 

There is no hard a fast rule, and certainly no guarantee that new arguments will provoke a remand.  I was just pointing out a trend I have seen in my practice over the years. 

I haven't been in practice long enough to see a trend in BPAI decisions in my own cases. So if you have personal experience with remand, I can't argue with that.

As for BPAI decisions in general, I did a search on "remand" recently, and the vast majority of hits were cases where the Appellant presented (allowable) new arguments in the Reply Brief and the Examiner failed to submit a Supplemental Answer. This seems quite different from what we've been talking about.

Am I misinterpreting your use of "remand"? Are you also including rejections raised sua sponte by the Board - like turning the Examiner's 102 into a 103?

[rmr236]

Just a thought -- Did you think of calling the SPE?

[klaviernista]

I haven't been in practice long enough to see a trend in BPAI decisions in my own cases. So if you have personal experience with remand, I can't argue with that.

As for BPAI decisions in general, I did a search on "remand" recently, and the vast majority of hits were cases where the Appellant presented (allowable) new arguments in the Reply Brief and the Examiner failed to submit a Supplemental Answer. This seems quite different from what we've been talking about.

Am I misinterpreting your use of "remand"? Are you also including rejections raised sua sponte by the Board - like turning the Examiner's 102 into a 103?

I do have a significant amount of experience with appealing matters to the board, both personally and as a review attorney on appeal briefs drafted by younger associates at my old firm.  And I do have personal experience with the Board remanding cases in view of new arguments raised in the briefs.  Unlike your search results, however, the vast majority of remands in my cases were where the board raised new arguments (a new ground of rejection) and ordered the examiner to reopen prosecution.  I remember one case in particular, partly because it had been pending for almost 10 years, and partly because it was one of the relatively few cases that I conducted oral argument before the Board.  That case involved an alloy compostion with specific properties that were not shown in the art.  Numerous arguments and evidence was presented during prosecution demonstrating that the properties claimed were the product of a certain heat treament that was also not shown in the art.  In the Brief, we incorporated all of those arguments and evidence, and made many new arguments based on additional evidence supplied by the applicant (metallurgical textbooks).  The Examiner responded to those arguments in an Examiner's Answer (reiterated the same rejections of record), we rebutted those arguments in a Reply Brief, and the case went up to the Board,.  During oral argument, the BPAI raised a new ground of rejection based on art that was supposedly considered by the Examiner 8 years before, but never applied.  One rationale articulated during oral argument was that the new evidence and arguments submitted in the brief gave the board reason to look at the previously considered art and determine that a new rejection was warranted.  Just one exampleof how I have seen the board use new arguments to ultimately remand a case back to the examining corps. 

To answer your question directly, my use of "remand" is intended to encompass all instances where the BPAI  returns a case to an examiner for further prosecution.  This is in contrast to reopening prosecution, which is an action taken by the examining corps. before a case is taken up by the Board for consideration.

[klaviernista]

You cannot worry about the possibility that an examiner will reopen prosecution in response to new arguments.  The examiner should reopen prosecution anytime an argument is persuasive.   At the time of writing the appeal brief, it is too late to worry about whether arguments are new. 

Further, you often have no choice regarding using new arguments.  Any new examiner position that shows up in an Advisory Action, or in a non-final office action that you intend to appeal, must be addressed in your appeal brief.

I agree that once you are starting to draft a brief, it is too late to worry about submitting new arguments.  That is why I address that issue in most cases before a Notice of Appeal is filed, i.e., by rarely appealing cases when the issues are still in a state of flux.  If an examiner is shifting positions, applying new art, etc., I generally don't appeal because the issues (in my opinion) are usually not "ripe" for appeal at that stage.  Of course there are exceptions to this general rule.  E.g., I would definitely appeal if it became apparent that an examiner was not acting in a bona fide way to advance prosecution, regardless of the developmental status of the arguments of record.  Indeed, I would routinely appeal cases prosecuted before two particular examiners once the first final Office Action was issued, precisely because I knew that it was pointless to attempt to persuade them that anything in that particular technological area (cosmetics) was patentable.

And you are of course correct that all new examiner arguments must be addressed in the appeal/reply briefs.  But as I've tried to clarify above, I generally wait until there is a prosecutorial impass (meaning no new issues were raised by the examiner in reply to an OA response submitted by the applicant) before appealing.  After all, the probability of success on appeal is (for the most part) quite low, the applicant expense is quite high, and the prosecution delay is substantial.  Thus, before I counsel a client to enage in the expensive and lengthy appeal process, I want to make sure that all steps have been taken to maximize the probability of success.

[Isaac]

During oral argument, the BPAI raised a new ground of rejection based on art that was supposedly considered by the Examiner 8 years before, but never applied.  One rationale articulated during oral argument was that the new evidence and arguments submitted in the brief gave the board reason to look at the previously considered art and determine that a new rejection was warranted.  Just one exampleof how I have seen the board use new arguments to ultimately remand a case back to the examining corps.

I'm not sure I see the lesson here.  If the examiner had heard those new arguments prior to your filing the brief, would you have expected the examiner to have take another look at the old reference prior to the appeal?   Was the problem instead, making an argument that, in hindsight, you would like to have taken back?

"I generally wait until there is a prosecutorial impass (meaning no new issues were raised by the examiner in reply to an OA response submitted by the applicant) before appealing."

Excellent point. 

[klaviernista]

Was the problem instead, making an argument that, in hindsight, you would like to have taken back?

No, the problem lies in the fact that could I have predicted that there was a significant chance the Board would use our new arguments and evidence to support a new ground of rejection based on 10 year old art previously considered by the examiner, I would not have appealed and wasted 2 years waiting for the Board to take the case up for consideration.  Rather, I would have presented those arguments and evidence to the Examiner, refuted any similar position the examiner may have taken, and then gone up on appeal.  At least then the issue would have been ripe for the Board's consideration and oral argument. 

In fact, I believe that I counseled this particular client not to appeal until after the new arguments and evidence were presented to the Examiner.  But as I mentioned, the client was hopping mad at the examiner and demanded that we take the case up on appeal immediately. 

[khazzah]

Updating this old thread with new info. First, a recap of the old thread ...

Months ago, I asked if the rules prohibited a very weird move in which I simultaneously filed amendments in response to a NFOA *and* a Notice of Appeal.

Some responders pointed out my Response would trigger another OA -- and which rejections would I then be appealing? Some suggested that my course of action could result in a remand by the Board because of the confusion.

To which I answered:

t0:  2nd NFOA                           ; twice rejected, triggers my right to appeal
t1:  Amend + Notice of Appeal    ; exercise my right to appeal   
t2 = t1+2mos-1day: first FOA     ; Ex says final is triggered by my amendments
t3 = t1+2mos: Appeal Brief        ; 2-month clock for filing Appeal Brief

My thinking in my original post was that my Appeal Brief responds to rejections in 2nd NFOA, since that's the OA in play when I filed the NoA.

OK, so maybe the PTO doesn't interpret the rules the way I was thinking, and then my Brief must respond to arguments in the new OA.

But I don't see anything wrong -- in practice,  not just "technically" -- with responding to not-yet-responded-to arguments in an Appeal Brief. I do that all the time when I appeal on first final.

And I'm not sure why you think the Board would remand because my Appeal Brief contained not-yet-responded-to-arguments ("new arguments").

I came across a recent BPAI decision, Ex parte Haney, that may shed some light on my earlier question. It's not quite the same as my scenario, but it's similar in that it features an additional OA after Notice of Appeal. The Board remanded to the Examiner to clear up the confusion.

In Ex parte Haney, the Applicant received a NFOA, and in response filed Notice of Appeal and a PABC. The Examiner reopened pros with a FOA. The Applicant filed another Notice of Appeal and an Appeal Brief -- but the Appeal Brief addressed the rejections in the previous (NF) OA, rather than the outstanding (F) OA. The Board remanded with instructions for the Applicant to file a Supplemental Appeal Brief addressing the rejections in the outstanding (F) OA. [Decision at http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2009004319-05-18-2010-1]

I see this case as distinguishable from the hypo in my original post. In my hypo (as developed later in the thread), I said my Appeal Brief would address any new rejections should another OA be mailed after my Notice of Appeal. In my view, the Board in Ex parte Haney remanded precisely because the Brief did not do that.

[Isaac]

In Ex parte Haney, the Applicant received a NFOA, and in response filed Notice of Appeal and a PABC. The Examiner reopened pros with a FOA.

As I understand things, your goal was to save time by avoiding that FOA.  If you cannot accomplish that, and apparently, Haney could not, then what advantage has been gained by appealing and amending in one step?

[khazzah]

As I understand things, your goal was to save time by avoiding that FOA.  If you cannot accomplish that, and apparently, Haney could not, then what advantage has been gained by appealing and amending in one step?

Agreed that one of my goals -- maybe even my primary goal -- was to save the cycle time of another OA+Response. And I can't stop the Examiner from issuing another OA.  But I would still be saving calendar time and [some] client money by not *responding* to the OA. Instead, I respond to new arguments in the Brief. Which I think distinguishes my hypo from Haney.

[BTW, so far I haven't implemented my weird strategy. Too much uncertainty.]