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When should you appeal a rejection? October 8, 2010

Posted by Brian Schar in Patent prosecution, USPTO.
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You can appeal from the rejection of claims in a Final Action or any subsequent Office Action.  But the fact that you can doesn’t mean you should.  Further, paying for an RCE doesn’t mean you need to wait for a final rejection post-RCE to appeal.

I typically appeal in one of two situations.  The first occurs when there are a limited number of issues (ideally a single issue) in an application, where the Examiner has dug in his or her heels, and the attorney (and/or client) believes that the client is entitled to the claim scope as it stands in the application.  A typical issue here is an interpretation of a particular claim term, where the Examiner has a different view that the client.  If you believe that the client is right, that the facts are in your favor, and that you have a much better than even chance of winning, then it makes sense to appeal.  (Part of building a winning record on appeals is not to appeal unless you’re very confident of winning.)  In this situation, further argument during prosecution will fall on deaf ears, and the application needs to be removed to the BPAI so that you can convince the APJs of the rightness of your cause.  An application may sometimes reach this point on final; it may reach this point on the first Office Action after filing an RCE.  If you find this happening to an application on the first Office Action after an RCE, further argument wastes your time and the Examiner’s time, and it is more efficient to appeal.

The other situation is when an application has received sloppy or lazy examination.  Sadly, the appeal brief in this situation is typically much longer and takes a lot longer to write.  You will know when you are receiving sloppy or lazy examination – cursory (or no) analysis of your claim language and arguments, obvious cut and paste language from other Office Actions (in your application or someone else’s), multiple uncited “arguments” to dubious or nonexistent principles of patent examination (e.g., “design choice”), and so on.  In this situation, you need to appeal in order to get adult supervision over the Examiner in your particular application.  These appeals typically get kicked back from the SPE with a new Office Action, usually one written in a more coherent manner.  Of course, sometimes the SPE is the problem, in which case such an appeal may end up at the Board anyway.

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Comments»

1. Karen G. Hazzah - October 11, 2010

Brian,

I believe that my philosophy matches yours almost exactly. I find that most of my cases in your first scenario (Examiner impasse) go all the way to appeal, ie, no reopening of pros. I find that of the cases in the second category (Examiner’s position is unclear), a fair number of these result in reopened pros, either in response to the PABC or the Brief.

One explanation I’ve heard for why some folks prefer to file a series of RCEs instead of Appeal is that “appeal takes too long”.

I wholeheartedly agree a decision on appeal takes too long. And if you could expect to see allowable subject matter after an RCE — or even two RCEs — then yeah, the RCE route is faster.

But in my experience, one RCE no longer gets you allowable subject matter. Plus, RCE processing is much slower now than before, due to Kappos’s changes to internal PTO procedures. So once again, appeal doesn’t look that bad because RCE doesn’t look that good.

2. Brian Schar - October 11, 2010

I have been in RCE hell before, where I have interviewed, believed I had agreement on an amendment, and was rejected again, over and over again. My record is 6 office actions before appeal. I will not let it go that far anymore.

You are exactly right that it’s the unclear/sloppy OA’s that lead to reopened prosecution. I like to expressly request appeal to the BPAI and expressly request that prosecution not be reopened, just to make sure the record is clear about what I really want.

3. Karen G. Hazzah - October 11, 2010

>when an application has received sloppy or lazy >examination. … These appeals typically get >kicked back from the SPE with a new Office
>Action, usually one written in a more coherent
>manner.

I *wish* that seeing a better Office Action on the re-opening of pros was my experience.

Sadly, I’ve seen just as many instances of reopened pros which amount to nothing more than a crappy 102 turned into a crappy 103 to address my “does not teach” argument. Or a crappy combination of 2 refs turned into an equally crappy combination of 3 refs.

When this happens, I file another Notice of Appeal *immediately*, without filing an intermediate response.

Some folks think the idea of appealing a brand new rejection is strange, but I don’t see the point in wasting my appeal fees and N months of delay in order on a response just to have the Examiner ignore my arguments once gain.

4. Brian Schar - October 12, 2010

I have had the same thing happen to me. Where I get prosecution reopened with similarly bad examination as I had before, that is the one situation where I will immediately refile a Notice of Appeal. It shows you’re onto their game and that you’re not going to be satisfied until you either get actual examination or a decision from the Board.


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