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Author Topic: Pre-appeal brief conference partial reversal  (Read 372 times)

AbstractIdeal

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Pre-appeal brief conference partial reversal
« on: 10-04-17 at 01:32 pm »

Has anyone had any experience with a pre-appeal brief conference partially reversing an Examiner? In particular, reversing one ground of rejection but not another? For example, if there is a 101 rejection and a 103 rejection of all claims, if the conference finds that all 103 rejections should be reversed (because, e.g., there was no motivation to combine), will the case be remanded to the examiner or will it continue to appeal? The Official Gazette notice doesn't address this scenario.
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Peacefulness

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Re: Pre-appeal brief conference partial reversal
« Reply #1 on: 10-04-17 at 04:00 pm »

Has anyone had any experience with a pre-appeal brief conference partially reversing an Examiner? In particular, reversing one ground of rejection but not another? For example, if there is a 101 rejection and a 103 rejection of all claims, if the conference finds that all 103 rejections should be reversed (because, e.g., there was no motivation to combine), will the case be remanded to the examiner or will it continue to appeal? The Official Gazette notice doesn't address this scenario.
In general, the examiner will send you a reply regarding the findings of the pre-appeal brief conference.  This should happen within 45 days of when you file it.  It's impossible to say what course of action the panel of SPEs would say on a case.  They could affirm the examiner and reply accordingly or tell the examiner to reopen prosecution with a second non-final, or conduct an interview to allow the case with an amendment to correct the 101 rejection or alternatively allow the case to advance to appeal where the PTAB can decide if the 101 rejection is warranted or not.
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bluerogue

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Re: Pre-appeal brief conference partial reversal
« Reply #2 on: 10-04-17 at 05:40 pm »

In general Peacefulness is correct.  There are may ways it could go.  I do think, however, that in most cases it goes on to appeal. Think of it as the equivalent of withdrawing a rejection in an examiner's answer after reading the appeal brief.  If there are other rejections, the appeal would still go to the board, just not on the withdrawn issue.
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The views expressed are my own and do not represent those of the USPTO. I am also not your lawyer nor providing legal advice.
 



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