just_n_examiner (just_n_examiner) wrote,
just_n_examiner
just_n_examiner

A First Glance at the Proposed New BPAI Rules

I've finally had the chance to look over the Proposed New BPAI Rules. Interesting stuff.

All those new [proposed] requirements for Appeal Briefs...it makes me glad that I'm working on this side of the fence.

One thing that caught my eye was the provision of rule 41.37(o) where an Appellant is required to identify at what point in prosecution their argument was first made to the examiner, or to state that the argument is a new one that has not been previously made.

This provision got me wondering...why are Appellants even allowed to raise new arguments in the appeal brief???

Of course, the knee-jerk answer would be that, well, examiners are allowed to raise new grounds of rejection in an Examiner's Answer (albeit with a director's signature), so it only seems fair that Appellants be allowed to raise new arguments in the Appeal Brief. The thing is, though, I still have issues with this (and I'm not going to get into the issue of examiners' new ground of rejection...I personally don't think it's a great idea, either).

First of all, I always thought that an appeal was supposed to resolve an impasse between the examiner and attorney/applicant. But if the Appellant is going to raise new issues that haven't yet been presented to the examiner, where's the impasse? It just doesn't seem to me as if the application is ripe for appeal if the Appellant has arguments that still have yet to be made to the examiner.

Perhaps a better question is why the Appellant thinks that submitting an Appeal Brief with new arguments is a good idea.

Consider the following hypothetical situation. The examiner sends out a first action, rejecting all of the claims. As often happens, the examiner spends more time on the independent claims than on some of the 'down-the-claim-tree' dependent claims, so perhaps the rejections of the independent claims are more solid than the rejections of some of the dependent claims. Throughout prosecution, the attorney/applicant argues only the rejections of the independent claims. The application is eventually appealed. In the Appeal Brief, the Appellant presents their arguments regarding the independent claims, but also presents brand new arguments regarding the rejections of some of the dependent claims.

What is likely to happen?

Well, if the rejection of the dependent claim(s) is questionable enough, and/or the Appellant's argument is persuasive enough, then the examiner might withdraw the rejection and re-open prosecution. Applicants want to spend the money to have an Appeal Brief written, including these new arguments, just to have the thing re-opened?? Haven't I heard attorneys bitching left and right about examiners re-opening prosecution after the applicant has spent money to have an Appeal Brief written?

Or perhaps the examiner will forge ahead and argue their case regarding the rejections of the dependent claims in the Examiner's Answer. If the rejections of the independent claims are reversed, then presenting the new arguments regarding rejections of the dependent claims was unnecessary. If the rejections are affirmed-in-part (the rejections of the independent claims are affirmed, but the rejections of the dependent [newly argued] claims are reversed), where does that leave the Appellant? That doesn't seem to be a great position to be in, either.

Wouldn't it have been better to have raised those new issues during prosecution and possibly saved the time and money of an appeal?

I guess that I just don't understand why raising new arguments in an Appeal Brief is a good idea, for either the examiner or for the Appellant.
Subscribe
  • Post a new comment

    Error

    default userpic

    Your IP address will be recorded 

    When you submit the form an invisible reCAPTCHA check will be performed.
    You must follow the Privacy Policy and Google Terms of use.
  • 84 comments

Anonymous

November 16 2007, 05:35:42 UTC 9 years ago

Sure it is.

Final after amendment based on new a crappy reference. All new arguments. Love it!

Examiner ignored dependent claims? I newly argue these separately patentable features whenever money allows. Go back and do your job without a count. Love it!

Brief fee need not be refiled. No count for examiner. Love it!


Anonymous

November 16 2007, 13:08:05 UTC 9 years ago

inre point #2: you already had your chance to argue the allegedly seperately patentable features of the dependant claims in response to the first office action. Your client made a buisness decision to wait until appeal. Accept the consequences.

GCG

Anonymous

9 years ago

Anonymous

9 years ago

Anonymous

9 years ago

Anonymous

9 years ago

Deleted comment

Anonymous

November 19 2007, 12:18:52 UTC 9 years ago

I don't think I understand. If the "new" secondary reference was substantially the same as the old one then the arguments you made against the old rejection would apply to the "new" one as well. You could present the same arguments after-final and the examiner would need to re-open. Am I missing something?

Deleted comment

Anonymous

9 years ago

Anonymous

9 years ago

Anonymous

9 years ago

Deleted comment

Anonymous

9 years ago

Anonymous

9 years ago

Anonymous

9 years ago

Anonymous

9 years ago

Deleted comment

Anonymous

9 years ago

Anonymous

9 years ago

Pre Appeal Conferences

Anonymous

9 years ago

Deleted comment

Re: Pre Appeal Conferences

Anonymous

9 years ago

Deleted comment

Re: Pre Appeal Conferences

Anonymous

9 years ago

Deleted comment

Re: Pre Appeal Conferences

Anonymous

9 years ago

Re: Pre Appeal Conferences

Anonymous

9 years ago

Re: Pre Appeal Conferences

Anonymous

9 years ago

I'd like to hear JPE's thoughts on some of the more punitive aspects of the proposed appeal rules. For example, the length of the applicant's briefs is limited (25 pages with 14 pt font) while the length of the examiner's reply brief is unlimited. If the applicant fails to address an issue raised in the examiner's reply brief, the issue is conceded by the applicant.

So, to prevent cases from going to the Board, an examiner could generate a 100 page reply brief including thousands of boilerplate statements as to why a claimed invention is obvious. In 25 pages the applicant would have trouble responding, so its only recourse would be to file a RCE and reopen prosecution.

The examiner would get tons of counts for doing this (1 for the answer, 1 for the FOAM after the RCE, and 1 when the applicant commits suicide and abandons the application). Count-wise, this is certainly an improvement from the current practice of automatically reopening prosecution after the applicant files its brief.
No count is given if an RCE is filed after the appeal brief. Also, correct me if I'm wrong, but if an examiner enters new grounds of rejections in an examiner's answer (even though the director signed off on it), applicant has the right to have the case reopened rather than go to the board.

Deleted comment

JD how about first things first, such as giving you an acceptable office action on the independent claims and then worrying about the dependent claims? When a particular limitation is important enough to put it in an independent claim, I'll thoroughly address it. BPAI operates this way too.

GCG
In a perfect world, the examiner presents a thorough prima facie case for rejection (or allowance) of all the pending claims in the first office action. The attorney responds by addressing all of those arguments with amendment, argument, or both. The examiner responds with a thorough final rejection, addressing all points. Issues are joined, go up on appeal, no new arguments required.

Unfortunately, the above scenario is the ideal, not real life. A September 25 office action is issued with a garbage 102 on all claims. It's legitimate for the independents, but ridiculous for most of the dependemts. Respond with amendment incorporating a dependent into the independent, and argue. Examiner responds with new grounds for rejection and makes it final ("necessitated by amendment"). Not really, because it's merely an incorporation of dependent claim into independent claim, but that's the way it goes. Perhaps could petition finality of rejection, but if I consider the rejection wrong, I may well go ahead to appeal and make whatever new arguments I need to address the new rejection. It's the examiner's fault for closing off prosecution by issuing a premature final.

Happens all the time.

Anonymous

November 16 2007, 20:41:41 UTC 9 years ago

"This provision got me wondering...why are Appellants even allowed to raise new arguments in the appeal brief???"


Uh, consider the source...who wrote those damned rules?

bierbelly
"Wouldn't it have been better to have raised those new issues during prosecution and possibly saved the time and money of an appeal?"

Yes it would.

Deleted comment

humbleagent

9 years ago

Anonymous

9 years ago

about the new rule

Anonymous

9 years ago

Re: about the new rule

Anonymous

9 years ago

Re: about the new rule

Anonymous

9 years ago

clarification of question

Anonymous

9 years ago

Re: clarification of question

Anonymous

9 years ago

Re: about KSR helping inventors

Anonymous

9 years ago

Anonymous

November 16 2007, 21:52:17 UTC 9 years ago

There are many good reasons why Applicants don't raise arguments during initial prosecution but do raise these arguments during the Appeal Brief.

1) Prosecution history estoppel ... why argue dependent claims 2, 3, 4, 5, etc. (and create estoppel as to those claims) when a winning argument as to claim 1 negates a need to separately argue claims 2-5. Also, one could prresent five separate arguments as to claim 1, but if you know that a single argument as to a single element should be sufficient, then those other four arguments aren't needed.

2) Cost efficiency ... to argue all possible arguments upfront would create responses that are more expensive than the applications themselves. If many examiners doesn't bother to read a 10-15 page application before issuing a rejection, do you think they'll read a 40-60 page response to the office action?

3) Persuasiveness .... when reviewing an office action, there can be several different arguments that could be made. However, if you overwhelm an examiner with lots of arguments they may pick the weakest argument, respond to that argument, and ignore the others. Only putting forth the best arguments prevents the examienr from side-stepping these arguments.

How about this for a trade off?
For any claim that is not amended during prosecution, the examiner only get a single bite of the apple with regard to applying prior art (i.e., the only art that you can cite after a first office action is art that only became prior art between the time the first office action was issued and the time of the subsequent office action. As part of the trade off, we'll present all our best arguments in the first reponse .... now that would be compact prosecution.

"Or perhaps the examiner will forge ahead and argue their case regarding the rejections of the dependent claims in the Examiner's Answer. If the rejections of the independent claims are reversed, then presenting the new arguments regarding rejections of the dependent claims was unnecessary. If the rejections are affirmed-in-part (the rejections of the independent claims are affirmed, but the rejections of the dependent [newly argued] claims are reversed), where does that leave the Appellant? That doesn't seem to be a great position to be in, either."

In this situation, most examiners are going to defer to the board and not reopen prosecution, in which case, applicant is happy. If the Board shot down applicant's arguments as to the independent claims, then the dependent claims are likely the best applicant will be able to get.

As for examiner's reopening prosecution after the appeal brief has been written, I don't mind that much. That hard part of the Appeal Brief (actually it isn't that hard but just time consuming) is all the extra stuff that needs to be put in. However, once it is done the first time, and subsequent appeal is much easier. From my experience, if the examiner reopens prosecution, the new rejections rarely are better than the old rejections. In these situations, I put the Examiner right back into Appeal.

My current record is having prosecution reopened 3 times (which means 4 Appeals, I appealed again after each Appeal). I am currently waiting on the examiner's resposne to the last Appeal. To be clear, the Examiner has written 6 office actions and has only gotten a single count .... I cannot think of a better example of why finding the best art at the very beginning is the most time-effective thing an examiner can do during prosecution.

Deleted comment

Anonymous

9 years ago

Anonymous

9 years ago

On having been chosen one of the Top 100 IP Blogs, by ABA Journal.
LOL, top 100. No disrespect intended for JPE, but how many IP blogs are there?

Re: CONGRATULATIONS !!!

Anonymous

9 years ago

Re: CONGRATULATIONS !!!

Anonymous

9 years ago

Rules

Anonymous

December 11 2007, 20:37:54 UTC 9 years ago

Would be interested in JNE's view of this:

http://emgill.blogspot.com/2007/12/pto-conspiracy-examiner-abuse.html

Cheers,
Erin-Michael