Reexamination - appeal after ACP

[heyitsjohn2002]

Writing an appellate brief after disfavorable ruling during reexamination.

I realize "no new evidence" is allowed... but does that mean "no new arguments"?

For example, the patent at issue and the cited art are "evidence".. they are on the record.  We previously argued that the patent isn't anticipated, etc., but the specific argument(s) weren't that great... so want to modify/tweak/supplement.  Good to go?

Additionally, what is "the record"?   Is the prosecution history of the reexam'ed patent automatically part of the record?  Alternatively, if I referenced any part of the file wrapper during re-exam, is the entire file wrapper available to cite to in appellate brief?

Haven't found anything that leads me to think I can't do any of the above.... but I haven't found anything that is on point saying I can.

Thanks for any help.... sorry if wrong forum; please move.

[JimIvey]

We previously argued that the patent isn't anticipated, etc., but the specific argument(s) weren't that great... so want to modify/tweak/supplement.  Good to go?

I think so.  I don't think you're strictly limited to your prior arguments. 

Regards.

[heyitsjohn2002]

Thanks Jim.  I think we're o.k., too, but if I'm opposing counsel, I would try to say something like, "they didn't raise this during the Examination, so shouldn't be able to on appeal."

The trick will be to figure out what the "error" is, and apply the argument into the error.

Unfortunately, that problem is only the first hurdle.. stuff gets deeper.

Before becoming Patent A, Application A was filed w/ improper claim of benefit to Parent X; however, on the same day, a preliminary amendment B was filed to amend Application A correctly claiming benefit to Parent X.

If I understand correctly, a preliminary amendment filed on the SAME DAY is considered PART OF the application?  Thus, Application A is now:  application A + prelim B, or application A*

The Examiner appeared to understand this as after the first office action, he DID NOT cite Parent X as a 102(b), but instead made a double patenting rejection.

FOr some dumbass reason, in the response, the attorney of record amended application A to improperly claim benefit (as a result of word choce) to Parent X....

[heyitsjohn2002]

But the attorney amended application A (i.e., amended the spec w/ the original language as it was filed initially), and not application A*.

Subsequent to this, the EXaminer still did not cite parent X as a 102(b).  And subsequent to that, a bib data sheet stated.. application is a CON of parent X, dated yyy.

However, when the patent issued, there was no continuity information on the front page, and the cross-reference paragraph had the dumb attorney amendment in it.

That's the way the patent stayed until reexam.  Question is: if the attorney amended application A, but not application A*, which superceded application A by way of the prelim amendment... should that amendment have been entered? Is it in effective?

That probably makes no sense...

[heyitsjohn2002]

one related nugget... in the non-final, parent X was cited for statutory double patenting.  Thus, amendmetns were made to overcome rejection via parent X.

in final action, parent X was cited for non-statutory... so applicant submitted terminal disclaimer.  In the file wrapper is document that says expressly: this patent is subject to terminal disclaimer (which only reitterates the bib data sheet, as well as the Examiner actions).

However, upon reexam, parent X is now cited as 102(b) b/c of improper benefit claim as a result of dumb attorney amendment.

Ugh...

[JimIvey]

Thanks Jim.  I think we're o.k., too, but if I'm opposing counsel, I would try to say something like, "they didn't raise this during the Examination, so shouldn't be able to on appeal."

Well, of course, they can say that.  However, without some authority to back them up, they'd be hard-pressed to overcome the age-old rebuttal, "So what?"  Without authority that requires your new arguments to be disregarded, they're effectively saying that they'd rather you couldn't do that.  Not very compelling.

I have very little experience with re-examination.  There are others here who know the rules backwards and forwards.  If the rules for appeals are somehow different for re-exams, hopefully someone else here will know.

To the extent you have inconsistent amendments (like amending some language that had already been changed by amendment), you should fix that by amendment.  And, I'd just do my best to explain the precise nature of the inconsistent amendments and to precisely explain what the application should now recite.

Let me try to put some illustrative examples to your hypo....

Application A: "Successful connection is likely when...."

Prelim Amendment B: "Successful connection is likely probable when..."

Later Amendment:  "Successful connection is more likely when...."

See, the last amendment did not accurately reflect the state of the application immediately prior to amendment -- as if Prelim Amendment B was completely overlooked.

First, you'd have to determine what the application ought to say.  Let's say that the spec ought to say "Successful connection is more probable when...."

Second, do your best to amend the spec to say that and explain, as best you can, how this amendment resolves the inconsistent amendments.  For example:

IN THE SPECIFICATION

... Successful connection is more likely probable when....

REMARKS
...
As amended by the preliminary amendment filed with the application, the specific read "Successful connection is probably when ...." at page _, lines _.  The Amendment filed ___ __, ____, through inadvertent clerical error without deceptive intention, misrepresented the state of the application to be amended.  This Amendment presumes that the Amendment of ____ __, ___ effectively, albeit inadvertently, changed "probable" back to "likely".  Applicant respectfully submits that this Amendment causes the specification to recite "Successful connection is more probable when ...." and corrects any inconsistencies in previously submitted amendments.

I hope that helps.

Regards.

[heyitsjohn2002]

we are on the same page - you're example is exactly what I'm faced with.

However, it's not a simple matter of amending the spec b/c it's an issued patent.  However, a cert of correction was filed during the original reexamination.  The granting of the cert is still in limbo.  One of the problems is that I don't think the reexam attorney did a very good job of spelling out all of the details.

THis leads me to one of the problems during appeal... I want to argue some stuff re the claim of benefit, but the stuff I want to reference is in the file wrapper, and it is not on the record during the reexam.... unless the record automically includes the file wrapper of the patent being re-exam'd (i.e., I am not sure if when a "patent" is on the record, does that mean ALL of the patent, including the file wrapper).

THanks again for chiming in!  I'll check back later and see if any experts commented.

[Jonathan]

I'm feeling more stupid than normal now.. what does ACP stand for?

[heyitsjohn2002]

I'm feeling more stupid than normal now.. what does ACP stand for?

After Close of Prosecution.  It's the functional equivalent of a Final Action, the caveat being that in reexam you don't have an option for RCE.

It might not be "ACP".. it might be "CAP" or "PCA".... can't remember exactly

[khazzah]

Writing an appellate brief after disfavorable ruling during reexamination.

You never explicitly state this, but it seems clear that you are representing the patentee. Is this ex parte or inter partes reexam?

Thanks Jim.  I think we're o.k., too, but if I'm opposing counsel, I would try to say something like, "they didn't raise this during the Examination, so shouldn't be able to on appeal."

I looked into this a few months ago, and there is absolutely no rule against raising new arguments in an appeal brief. See http://allthingspros.blogspot.com/2010/05/appeal-non-final-new-arguments.html

Caveat: there are significant differences between reexam and regular prosecution. So it's possible my statement above does not apply to reexam. That said, the reexam rules seem to refer to the appeal rules, and I can't see where the appeal rules treat reexam special. So as far as I can tell, my statement is true even in the reexam context.

Additionally, what is "the record"?   

Interesting question. For a patent app, the record is the prosecution history so far. But you're asking if the "record" for a reexam includes the pros history of the already-issued patent.

I have no idea. Though I am curious as to why you care, ie, what difference it makes. [Maybe you care because of the priority issue you bring up later?]

If I understand correctly, a preliminary amendment filed on the SAME DAY is considered PART OF the application? 

I think that's the rule *now*, but I also think it wasn't always the rule. That is, different rules may apply, depending on when your patent was filed.

if the attorney amended application A, but not application A*, which superceded application A by way of the prelim amendment... should that amendment have been entered? Is it in effective?

Two different questions. No, the Examiner should not have entered the amendment. My gut says that since he did, it's effective. But I don't have any authority for this.

[khazzah]

However, upon reexam, parent X is now cited as 102(b) b/c of improper benefit claim as a result of dumb attorney amendment.

Ahah! So you have to remove this as a reference, or you're dead. Should have mentioned that earlier -- it provides context for a lot of the other facts/issues you brought up earlier in the thread.

In the reexam, have you already argued that the claim to priority is proper and thus the reference is not prior art? If so, how did the Examiner and/or the third party requester respond?

[khazzah]

I want to argue some stuff re the claim of benefit, but the stuff I want to reference is in the file wrapper, and it is not on the record during the reexam.... unless the record automatically includes the file wrapper of the patent being re-exam'd

OK, so now I understand why you asked if the the file wrapper of the issued patent was included in "the record".

Since this is such an important question, and don't know of any easy way to look up the answer, I'd suggest calling the Examiner and/or the Board of Appeals to try and get an answer.

However, a cert of correction was filed during the original reexamination. 

Your reference to "original reexam" confused me. Is there more than one reexam? 

[bald & chained]

You should be able to raise new arguments - the Board reviews everything de novo, but you need to make sure you don't accidentally waive some of your original arguments if you want to keep them.  Check out Ex Parte Frye that came out earlier this year at page 10 and later: "Specifically, the Board reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue."

http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2009006013-02-26-2010-1

[heyitsjohn2002]

it is interes partes.

Yep, pretty much dead if can't overcome the examiner position that it is improper claim to benefit.  In that regard, yes, the examiner sided with third party.

Interestingly, he is saying the "patent" doesn't properly claim benefit under 35 USC 120, and as such, the parent X is 102(b).  However, I am going to argue that 120 doesn't say "Patent".. it says application.  And the application w/ the preliminary amendment clearly claimed benefit.  Moreover, the entire prosecution of the application went forward under the notion that it was a child of parent X.  There was no intent to decieve or misrepresentation - hell, we had to ammend to overcome statuory DP via rejection with parent X.

Yes, just one reexam - sorry for any confusion.  I think I meant "the first go around" of the reexam.

Thanks for your insight!! much appreciated

[heyitsjohn2002]

You should be able to raise new arguments - the Board reviews everything de novo, but you need to make sure you don't accidentally waive some of your original arguments if you want to keep them.  Check out Ex Parte Frye that came out earlier this year at page 10 and later: "Specifically, the Board reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue."

http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2009006013-02-26-2010-1

I am all over that.. thank you very much!!