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[TataBox]

Does anyone have any guidance between the two options?  Why chose one over the other as a patentee or maybe some stats?

Regards,

[klaviernista]

Does anyone have any guidance between the two options?  Why chose one over the other as a patentee or maybe some stats?

Regards,

Care to provide some context?  There are a number of different scenarios in play.

If you are referring to responding to a Final OA (which closes prosecution) by filing a request for reconsideration (which I interpret to mean an after-final response under 1.113) or a request for constinued examination (which reopens prosecution if a submission under 1.114 is submitted with it), than a number of factors should be considered.  I've listed a few below.  There are a number of posts on the subject as well.

Factors in favor of filing an after final response (request for reconsideration):

- Generally cheaper than an RCE (assumes no extensions are taken)
- Examiner will act on the response quicker than he will an RCE submission (under the new rules)
- Viable option if: (1) it proposes amendments that will place the application in condition for allowance; (2) it is being used to set the case up for appeal; or (3)  you are making an "apples vs oranges" argument (i.e., the examiner is arguing the prior art teaches apples, and your argument is that in fact it teaches oranges or something even further removed from apples, like cauliflower).

Factors against filing an after final response (request for reconsideration):
-Doesn't toll the time period for response to the action closing prosecution (typically a final Office Action);
-Examiner unlikely to give it serious consideration (i.e., Examiner is unlikely to spend more than 15 minutes considering it);
-Highly unlikely that proposed claim amendments will be entered, unless they place the application in immediate condition for allowance (Examiner will say they require further search and consideration 99% of the time)
-Frequently unsuccessful in advancing prosecution (notable exception being where the response proposes amendments placing the app. in condition for allowance);
-Can mean that further action to maintain the application (filing a notice of appeal, RCE, etc.) will be more expensive than it would have been had the after final response not been filed.

Factors in favor of filing an RCE (reopen prosecution):

-Tolls the response deadline;
-Ensures substantive consideration of whatever is in the accompanying 1.114 submission;
-Ensures entry of amendments made in the 1.114 submission (if any)
-Generally provides two more bites at the apple
-Better chance of success than an after final response.

Factors against filing an RCE (reopen prosecution):

-More expensive than filing an after final response
-New rules mean that the examiner may not consider the RCE submission for a long time
-Potential for 1st action final rejection is raised- particularly if no amendments accompany the 1.114 submission (not a "huge" concern, but the risk is elevated)

 

[Yak]

Factors against filing an RCE (reopen prosecution):

-New rules mean that the examiner may not consider the RCE submission for a long time
 

Klav, what part of new rules raises this?  I am still parsing my way through the AIA.  Is that what you are referring to?

[Isaac]

Tatabox hasn't responded, but I took the question as asking about your options after appeal.  But perhaps he did mean your options before the examiner.   Generally speaking, reconsideration never works.

In the context, I've always taken reconsideration to mean asking the examiner to reevaluate his OA using argument only (i.e. no claim amendments).  Generally speaking that trick never works either.

[rmr236]

RCEs are placed on the Examiner's "Special New Docket" and have no real time period in which they must be responded to (Before it was two months from docket date). Now they can languish until they are the oldest case on that area of the docket before they have to go out.
NOTE: Management can deem an RCE critical and move it ahead in the queue.

[NJ Patent1]

Tata:  Stats, stats, stats?  Man.  Don’t know of any and am clueless how to find them, even if I were inclined to try to do so.  And I don't know what they would mean if I found them.

IMO Klav gave a succinct synopsis of +s and -s of each option.  I concur w/ Isaac.  Unless ur cancelling claims and doing exactly what an Examiner suggests in a final OA, a Rule 116 is just a “shot-in-the-dark” until u file a RCE to get it entered as ur 114c “Submission”.  No harm in taking a shot, but don’t expect to hit anything.  You pay one fee (filing+search+exam), or RCE fee, and the Examiner will touch the app twice (or maybe not if u get first action final).  You want the Examiner to touch the case again?  Pay ur new fee.  My “economic analysis” of the USPTO, one fee = two touches.  If your traversal of finality is so well-founded and strong, petition for removal of finality or, better, appeal.  Error in my point of view? 

[khazzah]

Does anyone have any guidance between the two options?  Why chose one over the other as a patentee or maybe some stats?

It's still not clear to me what you mean by "two options". I see it as three options: After Final; RCE; or Appeal.

When it's my call -- rather than a client who gives me specific instructions -- my strategy is simple. If I feel I have strong arguments with the existing claims and client is unwilling to narrow claim scope, I file an Appeal. If amendments are needed -- either because the art really does teach or it probably doesn't but I want to more clearly distinguish -- then I file an RCE.

Another strategy I've seen discussed here -- and which I also agree with -- is appeal as soon as, but not before, you have reached an impasse with the Examiner. Meaning you understand his position and he understands yours. Until then, argue and/or amend, filing RCEs as necessary.

My biggest issue with strategy #2 is that it seems that Examiners often give little consideration to arguments presented After Final (ie, without an RCE). Sometimes I don't understand what the Examiner's position is on a Final, but it just rubs me the wrong way to pay for an RCE when I'm not amending, but merely arguing in an attempt to force the Examiner to explain his position more clearly.

[klaviernista]

Factors against filing an RCE (reopen prosecution):

-New rules mean that the examiner may not consider the RCE submission for a long time
 

Klav, what part of new rules raises this?  I am still parsing my way through the AIA.  Is that what you are referring to?

Sorry, should have said new PTO count system

[Yak]

Factors against filing an RCE (reopen prosecution):

-New rules mean that the examiner may not consider the RCE submission for a long time
 

Klav, what part of new rules raises this?  I am still parsing my way through the AIA.  Is that what you are referring to?

Sorry, should have said new PTO count system

Thanks

[TataBox]

My apologies.  It is actually out of reexamination with pending litigation in the DC.  BPAI invalidated a couple claims on 103 grounds (reversing the Examiner).  I was just considering how often the BPAI reverses itself on reconsideration of a 103.  It is probably never.

[khazzah]

My apologies.  It is actually out of reexamination with pending litigation in the DC.  BPAI invalidated a couple claims on 103 grounds (reversing the Examiner).  I was just considering how often the BPAI reverses itself on reconsideration of a 103.  It is probably never.

Then I think you're asking about a "request for rehearing" at the BPAI.

I don't have any stats, but I read a lot of BPAI decisions, and my sense is that winning on rehearing is not at all common. Maybe 10%? Just a guess.