Reexamination - appeal after ACP

[Isaac]

There was no intent to decieve or misrepresentation - hell, we had to ammend to overcome statuory DP via rejection with parent X.

The PTO might take the position that there is an error in the patent as issued and that the error is correctable, but that you haven't taken the proper steps to make the correction.

I think your 120 'patent versus application' argument is a loser given that the bpatent originally issued without the benefit claim.   

[heyitsjohn2002]

There was no intent to decieve or misrepresentation - hell, we had to ammend to overcome statuory DP via rejection with parent X.

The PTO might take the position that there is an error in the patent as issued and that the error is correctable, but that you haven't taken the proper steps to make the correction.

I think your 120 'patent versus application' argument is a loser given that the bpatent originally issued without the benefit claim.   

well, we have... we filed a certificate of correction.  Moreover, the ENTIRE prosecution occurred w/ the understanding of the applicant, the patent office, and the examiner, that application A* was a CON of parent X.  There's gotta be a comparable "significant performance" doctrine out there or something...

Might be a loser, but the ship is going down, so it's all hands/arguments on deck.

[heyitsjohn2002]

There was no intent to decieve or misrepresentation - hell, we had to ammend to overcome statuory DP via rejection with parent X.

The PTO might take the position that there is an error in the patent as issued and that the error is correctable, but that you haven't taken the proper steps to make the correction.

I think your 120 'patent versus application' argument is a loser given that the bpatent originally issued without the benefit claim.   

So it's interesting now that I've moved forward with making some arguments in the breif.  120 definitely refers to applications.  As such, the fact that the patent issued and/or published without a proper benefit claim has, from what I can see, zero bearing as to any determination under 120.  It's what happened with the application.  120 goes further to say that a proper claim of benefit must be made during pendency of the application (or something to that effect.  Well, as I said, there was a prelim amdmt that made proper claim to benefit, and it was made during the pendency of the application...

[Isaac]

So it's interesting now that I've moved forward with making some arguments in the breif.  120 definitely refers to applications.  As such, the fact that the patent issued and/or published without a proper benefit claim has, from what I can see, zero bearing as to any determination under 120.  It's what happened with the application.

The data on the face of the patent probably reflects the apparent removal of the benefit claim during prosecution.  Arguably, the examiners statements regarding your application apply equally well to your application just prior to issue.

[heyitsjohn2002]

So it's interesting now that I've moved forward with making some arguments in the breif.  120 definitely refers to applications.  As such, the fact that the patent issued and/or published without a proper benefit claim has, from what I can see, zero bearing as to any determination under 120.  It's what happened with the application.

The data on the face of the patent probably reflects the apparent removal of the benefit claim during prosecution.  Arguably, the examiners statements regarding your application apply equally well to your application just prior to issue.

That's true.  Somehere b/t the noa and issue, something changed.  If the board views that to be detrminative, that's trouble.

As a side note, there's a recent opinion from cafc about sec 120..  encyclopedia britt v. Alpine.. good stuff

[heyitsjohn2002]

okay, so my appeal brief is going to go over 30 pages... what is the authority for the petition... 41.3?  41.3 is for stuff before the board... I'm not sure we're "before the board" yet... so maybe it's 1.183?  Not sure...

Whatever country the CRU is located in these days... they dont return calls.

THanks for any help!

[khazzah]

okay, so my appeal brief is going to go over 30 pages... what is the authority for the petition... 41.3?  41.3 is for stuff before the board... I'm not sure we're "before the board" yet... so maybe it's 1.183?  Not sure...

What petition?

[heyitsjohn2002]

okay, so my appeal brief is going to go over 30 pages... what is the authority for the petition... 41.3?  41.3 is for stuff before the board... I'm not sure we're "before the board" yet... so maybe it's 1.183?  Not sure...

What petition?

sorry... 37 cfr 1.943(c) says the brief cannot exceed 30 pages... if it says it does, to have a certificate... i'm assuming that is something I can get by petition?  I guess I'll find out as we filed the petition last week.  Fingers crossed.


(c)
Appellant's briefs filed by the patent owner and the third party requester shall not exceed thirty pages or 14,000 words in length, excluding appendices of claims and reference materials such as prior art references. All other briefs filed by any party shall not exceed fifteen pages in length or 7,000 words. If the page limit for any brief is exceeded, a certificate is required stating the number of words contained in the brief.

[khazzah]

What petition?

sorry... 37 cfr 1.943(c) says the brief cannot exceed 30 pages...

Gotcha. I don't know anything about the particular rules applicable to reexam appeals.

[OMG IP]

After 9 months, my petition to exceed page length was gratned!  The breif has yet to be answered.  Way to be timely PTO!!

[khazzah]

After 9 months, my petition to exceed page length was granted!  The brief has yet to be answered.  Way to be timely PTO!!

So the petitions office isn't required to handle petitions in a reexam with "special dispatch"?

It does makes sense to me that there you haven't yet seen a reply to the brief -- either the Examiner's Answer or the other party's reply brief. Because until the petition is decided, you don't know what parts of the brief to respond to. Right?

[OMG IP]

After 9 months, my petition to exceed page length was granted!  The brief has yet to be answered.  Way to be timely PTO!!

So the petitions office isn't required to handle petitions in a reexam with "special dispatch"?

It does makes sense to me that there you haven't yet seen a reply to the brief -- either the Examiner's Answer or the other party's reply brief. Because until the petition is decided, you don't know what parts of the brief to respond to. Right?

The other party did answer the brief; there is no Examiner's Answer yet, other than granting the petition to exceed page length.  Overall, just an inside jab at how long it took -- as an ex-examiner, I always feel entitled to do so.   I am more so patting myself on the back for, at least apparently, doing something right on the first go around.