Won appeal - what happens now?

[Rheo]

I filed my first appeal a loooong time ago, and I got a notification today that the examiner was reversed with regard to all claims.

What happens now with regard to the examiner?

Does she call and beg my forgiveness for ever doubting me?

Does she just issue a notice of allowance?

How much trouble could she cause at this point? -- Meaning, can she reject the claims on new grounds that she finds and/or makes up out of thin air (that was her pattern during examination).

Anything else I should know as a freshly minted appeals expert?

Thanks in advance for info.

[bluerogue]

What happens now with regard to the examiner?

It goes on the docket as a special amended to be dealt with quickly.

Does she call and beg my forgiveness for ever doubting me?

Unlikely, but who knows.

Does she just issue a notice of allowance?


Generally yes.

How much trouble could she cause at this point? -- Meaning, can she reject the claims on new grounds that she finds and/or makes up out of thin air (that was her pattern during examination).

She could reopen with the TC director's approval and issue a new non final.  This is rare.

[MYK]

Really, they usually do an NOA after losing an appeal??  The only one I traced through (going through file history) just got a new rejection after a pre-appeal conference call.  I'm guessing she got her ass chewed off by her primary after the call, but it didn't seem to help.

[lazyexaminer]

Really, they usually do an NOA after losing an appeal??  The only one I traced through (going through file history) just got a new rejection after a pre-appeal conference call.  I'm guessing she got her ass chewed off by her primary after the call, but it didn't seem to help.

As bluerogue said above, reopening after losing an appeal requires approval of the TC Director, i.e. the SPE's boss. Examiners and SPEs are one thing, but in my experience Directors aren't interested in rubber stamping BS rejections and will question what the heck is going on. And if it's not BS, why didn't the examiner apply it in the first place? Examiners aren't really supposed to be searching anew after appeal: "The examiner should never regard such a reversal as a challenge to make a new search to uncover other and better references . . . If the examiner has specific knowledge of the existence of a particular reference or references which indicate nonpatentability of any of the appealed claims as to which the examiner was reversed, they should submit the matter to the Technology Center (TC) Director or Central Reexamination Unit (CRU) Director for authorization to reopen prosecution under 37 CFR 1.198  for the purpose of entering the new rejection." MPEP 1214.04.

[ThomasPaine]

"...but in my experience Directors aren't interested in rubber stamping BS rejections and will question what the heck is going on."

My experience is the exact opposite.  Have had several re-opened after total reversals.

Now I pre-empt re-opening by calling the examiner and asking when he/she's gonna issue the Notice of Allowance.  I had one reversed in September.  Called the examiner on the two month date and asked when NOA was going to be mailed.  Examiner said there was "a reference" I needed to look at.  So I looked at it.  It was like a 3rd or 4th reference from a combination against a dependent claim that had been applied since the prosecution began 3.5 years before the appeal.  Called the examiner back and left vm (the examiner has never answered when I've called) and said, as politely as possible, "WTF?"  Immediately called SPE.  Left vm.  No return call for a week.  Left a second vm.  SPE calls me  and says, "Well, the examiner shouldn't have mentioned that reference, but there is another one we are looking at."  I made it clear to the SPE that I was expecting a NOA.  Don't hear from SPE for a week or so, call TC Director, leave vm.  She calls me back and I tell her that if I don't get NOA I'm going to be extremely displeased and will call Mr. Iancu every single day until he agrees to speak to me.  She thanks me for the courtesy call.  A few days later I get a vm from the SPE that my NOA is in process.

[mersenne]

I've mostly gotten allowances after winning at the PTAB, except for one (which was an Alice issue).  I'd won, but the examiner really didn't want to allow.  I think I got a new OA rejecting, plus one tiny minor dependent claim allowable.  Client took the money and ran, and I didn't blame 'em.

[steelie]

Does she call and beg my forgiveness for ever doubting me?

That's a misconception.

Behind the curtain, she may have been pleading with her primary + SPE combo to get your application allowed

[JV]

You've received several responses already, and I have nothing new to add, just some further data points.  I have had several appeals go my way within the past year, and in each case received a NOA shortly after the decision.  The one case worth mentioning is where there was only a partial reversal - we lost on the independent claim, but won one several dependent claims.  We filed an amendment to the claims within the two month period after the decision, amending the claims to put them in condition for allowance (i.e. canceling the independent, making some of the dependents independent).  This was followed by a NOA.

[fewyearsin]

Behind the curtain, she may have been pleading with her primary + SPE combo to get your application allowed

Steelie - there are so many unique and bizarre situations at the PTO, I'm glad that what you describe is one that I've never experienced (though I have a friend who suffers with that every day).  The unreasonable and unrealistic demands placed by incompetent SPEs on unwitting juniors is unbelievable.  When a junior comes for help, the answer shouldn't be "I'm sure it's out there, go reject it."  That's neither managing nor mentoring - that's abdication of responsibility.  I'm not saying that SPE's need to know everything, but they need to find help from other Primaries or provide actual useful advice, like search terms or classes, or at least concepts to focus on.  And then if the examiner searches and doesn't find it and can explain their reasons for allowance, the SPE needs to be willing to allow cases every now and then.

Anyway, the situation you describe is one of the worst at the Office (though hopefully somewhat rare, I don't actually know).  My friend won't go on the program because she knows (or is afraid that) her SPE will be actively undermining her rather than supporting her through the review.  She has been at the Office almost 9 years, and I keep trying to convince her that her situation is not normal, and she either needs to leave the Office, or switch art units.  It's disturbingly similar to an abusive marital relationship in how she defends her SPEs unacceptable behavior and feels that she is somehow not good enough to become a Primary.

[Robert K S]

Wait 'til you get a new action with the same references and reasoning applied against the claims, just with the primacy of the references reversed, and this time the Board affirms.

[ThomasPaine]

That actually happened IIRC.

[Robert K S]

I know it did.

[Toot Aps Esroh]

RKS/TP, is this one you mention written up anywhere publicly so we can read about it?  (karen's blog, e.g.)

Also, was the board of the same composition as the previous?  Not that it should matter, in an ideal world.

[Toot Aps Esroh]

Steelie - there are so many unique and bizarre situations at the PTO, I'm glad that what you describe is one that I've never experienced (though I have a friend who suffers with that every day).  The unreasonable and unrealistic demands placed by incompetent SPEs on unwitting juniors is unbelievable. 

Yeah.  A GAU that I and a few colleagues had the majority of our cases in for another job routinely stopped giving allowances after a certain time of year.  Several of the primaries told us (separately, in different conversations) that the SPE would watch the error rate and if it went past about half of what was then acceptable - no more allowances that year, no matter what, except upon BPAI reversal.  (And sometimes not even then, although at least reopens were rare there)

[fewyearsin]

Steelie - there are so many unique and bizarre situations at the PTO, I'm glad that what you describe is one that I've never experienced (though I have a friend who suffers with that every day).  The unreasonable and unrealistic demands placed by incompetent SPEs on unwitting juniors is unbelievable. 

Yeah.  A GAU that I and a few colleagues had the majority of our cases in for another job routinely stopped giving allowances after a certain time of year.  Several of the primaries told us (separately, in different conversations) that the SPE would watch the error rate and if it went past about half of what was then acceptable - no more allowances that year, no matter what, except upon BPAI reversal.  (And sometimes not even then, although at least reopens were rare there)

Wow, just wow. 

I talked to my SPE one year when my allowance rate was unusually high, and he was cool and understood that things fluctuate.  I went from like 60% one year to almost 90%, but it was largely based on a paucity of abandonments that year for whatever reason.  Just a couple abandonments can move the allowance rate 10% or more depending on your total workflow.  It is absolutely ridiculous to arbitrarily set an allowance rate based on any factors that are NOT the application's own merits.