Discussion:
U.S. Appeal Practice
(too old to reply)
yp
2004-10-02 00:08:00 UTC
Permalink
I am still struggling with the appeal case which I already mentioned
previously.

I filed an Appellant's Brief and have now received the Examiner's
Answer. The Examiner generally re-hashed the same arguments as were
previously presented during the prosecution and has indicated that
"For the above reasons, it is believed that the rejections should be
sustained"

In arguing, however, the remarks that were made in the Appellant's
Brief, the Examiner indicates the following:

"In response to appellant's argument that the references fail to show
certain features of appellant's invention, it is noted that the
features upon which appellant relies are not recited in the rejected
claims. Although the claims are interpreted in light of the
specification, limitations from the specification are not read into
the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed.
Cir. 1993)"

I will not, of course indicate the specific feature referred to by the
Examiner, but I will mention something equivalent. In the references
it was required that the surfaces be, let us say "corrugated" in order
for the system to work. In appellant's case the surfaces are
non-corrugated. This is clear from the disclosure, but since it is a
"negative characteristic" (not having something) it was not indicated
as such in the claims.

However, there would certainly be no objection to specify this
negative characteristic in the claims, namely that the surfaces are
non-corrugated.

In CFR 1.193(b), it is stated that the appellant may file a reply
brief directed only to such new points of argument as may be raised by
the examiner's answer. ........ and that ... such reply may be
accompanied by any amendment or material appropriate to the new
ground.

Could I now file an amendment to the claims wherein I would specify
that the surfaces are "non-corrugated"?

Any comments would be appreciated.
Steve Marcus
2004-10-02 12:42:50 UTC
Permalink
Post by yp
I am still struggling with the appeal case which I already mentioned
previously.
I filed an Appellant's Brief and have now received the Examiner's
Answer. The Examiner generally re-hashed the same arguments as were
previously presented during the prosecution and has indicated that
"For the above reasons, it is believed that the rejections should be
sustained"
In arguing, however, the remarks that were made in the Appellant's
"In response to appellant's argument that the references fail to show
certain features of appellant's invention, it is noted that the
features upon which appellant relies are not recited in the rejected
claims. Although the claims are interpreted in light of the
specification, limitations from the specification are not read into
the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed.
Cir. 1993)"
I will not, of course indicate the specific feature referred to by the
Examiner, but I will mention something equivalent. In the references
it was required that the surfaces be, let us say "corrugated" in order
for the system to work. In appellant's case the surfaces are
non-corrugated. This is clear from the disclosure, but since it is a
"negative characteristic" (not having something) it was not indicated
as such in the claims.
If a limitation is not in the claims, you cannot rely upon that limitation
for patentability.

Certainly, the claims could have described the surface (per your
hypothetical example) as being "substantially planar." An argument that
this limitation distinguishes over references showing a corrugated surface
would have been successful; note that once the limitation is in the claim,
it is proper to refer to the specification as to its meaning.
Post by yp
However, there would certainly be no objection to specify this
negative characteristic in the claims, namely that the surfaces are
non-corrugated.
In CFR 1.193(b), it is stated that the appellant may file a reply
brief directed only to such new points of argument as may be raised by
the examiner's answer. ........ and that ... such reply may be
accompanied by any amendment or material appropriate to the new
ground.
Could I now file an amendment to the claims wherein I would specify
that the surfaces are "non-corrugated"?
You can file the amendment. But it will certainly be refused entry.

If, upon rethinking your position, you now understand that you will lose the
appeal (at least on this "hypothetical" illustration of the issue it sure
looks that way), you can refile or file an RCE and request entry of that
amendment.
Post by yp
Any comments would be appreciated.
You're welcome.

Steve
--
The above posting is neither a legal opinion nor legal advice,
because we do not have an attorney-client relationship, and
should not be construed as either. This posting does not
represent the opinion of my employer, but is merely my personal
view. To reply, delete _spamout_ and replace with the numeral 3
Alun
2004-10-02 15:41:49 UTC
Permalink
Post by Steve Marcus
Post by yp
I am still struggling with the appeal case which I already mentioned
previously.
I filed an Appellant's Brief and have now received the Examiner's
Answer. The Examiner generally re-hashed the same arguments as were
previously presented during the prosecution and has indicated that
"For the above reasons, it is believed that the rejections should be
sustained"
In arguing, however, the remarks that were made in the Appellant's
"In response to appellant's argument that the references fail to show
certain features of appellant's invention, it is noted that the
features upon which appellant relies are not recited in the rejected
claims. Although the claims are interpreted in light of the
specification, limitations from the specification are not read into
the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed.
Cir. 1993)"
I will not, of course indicate the specific feature referred to by the
Examiner, but I will mention something equivalent. In the references
it was required that the surfaces be, let us say "corrugated" in order
for the system to work. In appellant's case the surfaces are
non-corrugated. This is clear from the disclosure, but since it is a
"negative characteristic" (not having something) it was not indicated
as such in the claims.
If a limitation is not in the claims, you cannot rely upon that
limitation for patentability.
Certainly, the claims could have described the surface (per your
hypothetical example) as being "substantially planar." An argument
that this limitation distinguishes over references showing a corrugated
surface would have been successful; note that once the limitation is in
the claim, it is proper to refer to the specification as to its
meaning.
Post by yp
However, there would certainly be no objection to specify this
negative characteristic in the claims, namely that the surfaces are
non-corrugated.
In CFR 1.193(b), it is stated that the appellant may file a reply
brief directed only to such new points of argument as may be raised by
the examiner's answer. ........ and that ... such reply may be
accompanied by any amendment or material appropriate to the new
ground.
Could I now file an amendment to the claims wherein I would specify
that the surfaces are "non-corrugated"?
You can file the amendment. But it will certainly be refused entry.
If, upon rethinking your position, you now understand that you will
lose the appeal (at least on this "hypothetical" illustration of the
issue it sure looks that way), you can refile or file an RCE and
request entry of that amendment.
Post by yp
Any comments would be appreciated.
You're welcome.
Steve
I would add that there is a tendency, based on some recent case law, to
interpret claim terms as per the dictionary, regardless of how they are
defined in the spec.

Alun Palmer, Patent Agent
yp
2004-10-03 15:39:03 UTC
Permalink
Post by Alun
Post by Steve Marcus
Post by yp
I am still struggling with the appeal case which I already mentioned
previously.
I filed an Appellant's Brief and have now received the Examiner's
Answer. The Examiner generally re-hashed the same arguments as were
previously presented during the prosecution and has indicated that
"For the above reasons, it is believed that the rejections should be
sustained"
In arguing, however, the remarks that were made in the Appellant's
"In response to appellant's argument that the references fail to show
certain features of appellant's invention, it is noted that the
features upon which appellant relies are not recited in the rejected
claims. Although the claims are interpreted in light of the
specification, limitations from the specification are not read into
the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed.
Cir. 1993)"
I will not, of course indicate the specific feature referred to by the
Examiner, but I will mention something equivalent. In the references
it was required that the surfaces be, let us say "corrugated" in order
for the system to work. In appellant's case the surfaces are
non-corrugated. This is clear from the disclosure, but since it is a
"negative characteristic" (not having something) it was not indicated
as such in the claims.
If a limitation is not in the claims, you cannot rely upon that
limitation for patentability.
Certainly, the claims could have described the surface (per your
hypothetical example) as being "substantially planar." An argument
that this limitation distinguishes over references showing a corrugated
surface would have been successful; note that once the limitation is in
the claim, it is proper to refer to the specification as to its
meaning.
Post by yp
However, there would certainly be no objection to specify this
negative characteristic in the claims, namely that the surfaces are
non-corrugated.
In CFR 1.193(b), it is stated that the appellant may file a reply
brief directed only to such new points of argument as may be raised by
the examiner's answer. ........ and that ... such reply may be
accompanied by any amendment or material appropriate to the new
ground.
Could I now file an amendment to the claims wherein I would specify
that the surfaces are "non-corrugated"?
You can file the amendment. But it will certainly be refused entry.
If, upon rethinking your position, you now understand that you will
lose the appeal (at least on this "hypothetical" illustration of the
issue it sure looks that way), you can refile or file an RCE and
request entry of that amendment.
Post by yp
Any comments would be appreciated.
You're welcome.
Steve
I would add that there is a tendency, based on some recent case law, to
interpret claim terms as per the dictionary, regardless of how they are
defined in the spec.
Alun Palmer, Patent Agent
In this case, the way the claim is structured, I think one can argue
that it is obvious that the surface is "non-corrugated". In fact this
term was not used in the specification, and thus if I introduced it
now, the examiner could reject it as not being supported by the
disclosure. On the other hand it is explained in the disclosure why
this structure represents an improvement over "corrugated" structures
which are identified as being known in the art. Thus, a person skilled
in the art would understand that the claimed structure does not use
corrugations when reading both the claim and the disclosure.
yp
2004-10-02 15:31:17 UTC
Permalink
On Sat, 2 Oct 2004 08:42:50 -0400, "Steve Marcus"
Post by Steve Marcus
Post by yp
I am still struggling with the appeal case which I already mentioned
previously.
I filed an Appellant's Brief and have now received the Examiner's
Answer. The Examiner generally re-hashed the same arguments as were
previously presented during the prosecution and has indicated that
"For the above reasons, it is believed that the rejections should be
sustained"
In arguing, however, the remarks that were made in the Appellant's
"In response to appellant's argument that the references fail to show
certain features of appellant's invention, it is noted that the
features upon which appellant relies are not recited in the rejected
claims. Although the claims are interpreted in light of the
specification, limitations from the specification are not read into
the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed.
Cir. 1993)"
I will not, of course indicate the specific feature referred to by the
Examiner, but I will mention something equivalent. In the references
it was required that the surfaces be, let us say "corrugated" in order
for the system to work. In appellant's case the surfaces are
non-corrugated. This is clear from the disclosure, but since it is a
"negative characteristic" (not having something) it was not indicated
as such in the claims.
If a limitation is not in the claims, you cannot rely upon that limitation
for patentability.
Certainly, the claims could have described the surface (per your
hypothetical example) as being "substantially planar." An argument that
this limitation distinguishes over references showing a corrugated surface
would have been successful; note that once the limitation is in the claim,
it is proper to refer to the specification as to its meaning.
Post by yp
However, there would certainly be no objection to specify this
negative characteristic in the claims, namely that the surfaces are
non-corrugated.
In CFR 1.193(b), it is stated that the appellant may file a reply
brief directed only to such new points of argument as may be raised by
the examiner's answer. ........ and that ... such reply may be
accompanied by any amendment or material appropriate to the new
ground.
Could I now file an amendment to the claims wherein I would specify
that the surfaces are "non-corrugated"?
You can file the amendment. But it will certainly be refused entry.
If, upon rethinking your position, you now understand that you will lose the
appeal (at least on this "hypothetical" illustration of the issue it sure
looks that way), you can refile or file an RCE and request entry of that
amendment.
Post by yp
Any comments would be appreciated.
You're welcome.
Steve
Thank you Steve for your useful comments. On the other hand, can I go
ahead with the appeal and then if I get an unfavourable decision, I
would file the RCE. Is this acceptable?

Also, should I call the Examiner and discuss with him the opportunity
of filing the amendment and/or the RCE? Namely, find out whether if I
do it, will he accept the claims?
Steve Marcus
2004-10-02 23:05:04 UTC
Permalink
Post by yp
On Sat, 2 Oct 2004 08:42:50 -0400, "Steve Marcus"
Post by Steve Marcus
Post by yp
I am still struggling with the appeal case which I already mentioned
previously.
I filed an Appellant's Brief and have now received the Examiner's
Answer. The Examiner generally re-hashed the same arguments as were
previously presented during the prosecution and has indicated that
"For the above reasons, it is believed that the rejections should be
sustained"
In arguing, however, the remarks that were made in the Appellant's
"In response to appellant's argument that the references fail to show
certain features of appellant's invention, it is noted that the
features upon which appellant relies are not recited in the rejected
claims. Although the claims are interpreted in light of the
specification, limitations from the specification are not read into
the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed.
Cir. 1993)"
I will not, of course indicate the specific feature referred to by the
Examiner, but I will mention something equivalent. In the references
it was required that the surfaces be, let us say "corrugated" in order
for the system to work. In appellant's case the surfaces are
non-corrugated. This is clear from the disclosure, but since it is a
"negative characteristic" (not having something) it was not indicated
as such in the claims.
If a limitation is not in the claims, you cannot rely upon that limitation
for patentability.
Certainly, the claims could have described the surface (per your
hypothetical example) as being "substantially planar." An argument that
this limitation distinguishes over references showing a corrugated surface
would have been successful; note that once the limitation is in the claim,
it is proper to refer to the specification as to its meaning.
Post by yp
However, there would certainly be no objection to specify this
negative characteristic in the claims, namely that the surfaces are
non-corrugated.
In CFR 1.193(b), it is stated that the appellant may file a reply
brief directed only to such new points of argument as may be raised by
the examiner's answer. ........ and that ... such reply may be
accompanied by any amendment or material appropriate to the new
ground.
Could I now file an amendment to the claims wherein I would specify
that the surfaces are "non-corrugated"?
You can file the amendment. But it will certainly be refused entry.
If, upon rethinking your position, you now understand that you will lose the
appeal (at least on this "hypothetical" illustration of the issue it sure
looks that way), you can refile or file an RCE and request entry of that
amendment.
Post by yp
Any comments would be appreciated.
You're welcome.
Steve
Thank you Steve for your useful comments. On the other hand, can I go
ahead with the appeal and then if I get an unfavourable decision, I
would file the RCE. Is this acceptable?
Yes.
Post by yp
Also, should I call the Examiner and discuss with him the opportunity
of filing the amendment and/or the RCE? Namely, find out whether if I
do it, will he accept the claims?
You can try. It is doubtful that the examiner would have an interview at
this stage of the prosecution. On the other hand, if you file an RCE (and
as the submission required when filing an RCE, the amendment), the examiner
should have no problem conducting an interview prior to acting on the RCE.

Steve
--
The above posting is neither a legal opinion nor legal advice,
because we do not have an attorney-client relationship, and
should not be construed as either. This posting does not
represent the opinion of my employer, but is merely my personal
view. To reply, delete _spamout_ and replace with the numeral 3
yp
2004-10-03 15:31:57 UTC
Permalink
On Sat, 2 Oct 2004 19:05:04 -0400, "Steve Marcus"
Post by yp
Post by yp
On Sat, 2 Oct 2004 08:42:50 -0400, "Steve Marcus"
Post by Steve Marcus
Post by yp
I am still struggling with the appeal case which I already mentioned
previously.
I filed an Appellant's Brief and have now received the Examiner's
Answer. The Examiner generally re-hashed the same arguments as were
previously presented during the prosecution and has indicated that
"For the above reasons, it is believed that the rejections should be
sustained"
In arguing, however, the remarks that were made in the Appellant's
"In response to appellant's argument that the references fail to show
certain features of appellant's invention, it is noted that the
features upon which appellant relies are not recited in the rejected
claims. Although the claims are interpreted in light of the
specification, limitations from the specification are not read into
the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed.
Cir. 1993)"
I will not, of course indicate the specific feature referred to by the
Examiner, but I will mention something equivalent. In the references
it was required that the surfaces be, let us say "corrugated" in order
for the system to work. In appellant's case the surfaces are
non-corrugated. This is clear from the disclosure, but since it is a
"negative characteristic" (not having something) it was not indicated
as such in the claims.
If a limitation is not in the claims, you cannot rely upon that
limitation
Post by yp
Post by Steve Marcus
for patentability.
Certainly, the claims could have described the surface (per your
hypothetical example) as being "substantially planar." An argument that
this limitation distinguishes over references showing a corrugated
surface
Post by yp
Post by Steve Marcus
would have been successful; note that once the limitation is in the
claim,
Post by yp
Post by Steve Marcus
it is proper to refer to the specification as to its meaning.
Post by yp
However, there would certainly be no objection to specify this
negative characteristic in the claims, namely that the surfaces are
non-corrugated.
In CFR 1.193(b), it is stated that the appellant may file a reply
brief directed only to such new points of argument as may be raised by
the examiner's answer. ........ and that ... such reply may be
accompanied by any amendment or material appropriate to the new
ground.
Could I now file an amendment to the claims wherein I would specify
that the surfaces are "non-corrugated"?
You can file the amendment. But it will certainly be refused entry.
If, upon rethinking your position, you now understand that you will lose
the
Post by yp
Post by Steve Marcus
appeal (at least on this "hypothetical" illustration of the issue it sure
looks that way), you can refile or file an RCE and request entry of that
amendment.
Post by yp
Any comments would be appreciated.
You're welcome.
Steve
Thank you Steve for your useful comments. On the other hand, can I go
ahead with the appeal and then if I get an unfavourable decision, I
would file the RCE. Is this acceptable?
Yes.
Post by yp
Also, should I call the Examiner and discuss with him the opportunity
of filing the amendment and/or the RCE? Namely, find out whether if I
do it, will he accept the claims?
You can try. It is doubtful that the examiner would have an interview at
this stage of the prosecution. On the other hand, if you file an RCE (and
as the submission required when filing an RCE, the amendment), the examiner
should have no problem conducting an interview prior to acting on the RCE.
Steve
The point in this case is that even without specifying the
characteristic of the surface, the examiner rejected the main claim on
a combination of three references. So I think that I can win this
appeal without filing an RCE at this stage. However, if the appeal
board rejects the application on this specific point, that the surface
is not sufficiently specified, then I can always file an RCE.

On the other hand if I had a commitment from the Examiner, that an RCE
with the specified surface would render the application acceptable,
then I would prefer to go that route, to avoid waiting a couple of
years for the appeal decision.

Now the Examiner's answer is signed by three examiners: the original
examiner who handled the prosecution, the supervisory patent examiner
in one art unit and, for some reason, a supervisory patent examiner in
another art unit whom I never encountered before. I don't trust the
original examiner, because he already promised to me something over
the phone and then reneged on his promise. Should I therefore call one
of the supervisory examiners?
Steve Marcus
2004-10-04 00:27:45 UTC
Permalink
Post by yp
On Sat, 2 Oct 2004 19:05:04 -0400, "Steve Marcus"
Post by yp
Post by yp
On Sat, 2 Oct 2004 08:42:50 -0400, "Steve Marcus"
Post by Steve Marcus
Post by yp
I am still struggling with the appeal case which I already mentioned
previously.
I filed an Appellant's Brief and have now received the Examiner's
Answer. The Examiner generally re-hashed the same arguments as were
previously presented during the prosecution and has indicated that
"For the above reasons, it is believed that the rejections should be
sustained"
In arguing, however, the remarks that were made in the Appellant's
"In response to appellant's argument that the references fail to show
certain features of appellant's invention, it is noted that the
features upon which appellant relies are not recited in the rejected
claims. Although the claims are interpreted in light of the
specification, limitations from the specification are not read into
the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed.
Cir. 1993)"
I will not, of course indicate the specific feature referred to by the
Examiner, but I will mention something equivalent. In the references
it was required that the surfaces be, let us say "corrugated" in order
for the system to work. In appellant's case the surfaces are
non-corrugated. This is clear from the disclosure, but since it is a
"negative characteristic" (not having something) it was not indicated
as such in the claims.
If a limitation is not in the claims, you cannot rely upon that
limitation
Post by yp
Post by Steve Marcus
for patentability.
Certainly, the claims could have described the surface (per your
hypothetical example) as being "substantially planar." An argument that
this limitation distinguishes over references showing a corrugated
surface
Post by yp
Post by Steve Marcus
would have been successful; note that once the limitation is in the
claim,
Post by yp
Post by Steve Marcus
it is proper to refer to the specification as to its meaning.
Post by yp
However, there would certainly be no objection to specify this
negative characteristic in the claims, namely that the surfaces are
non-corrugated.
In CFR 1.193(b), it is stated that the appellant may file a reply
brief directed only to such new points of argument as may be raised by
the examiner's answer. ........ and that ... such reply may be
accompanied by any amendment or material appropriate to the new
ground.
Could I now file an amendment to the claims wherein I would specify
that the surfaces are "non-corrugated"?
You can file the amendment. But it will certainly be refused entry.
If, upon rethinking your position, you now understand that you will lose
the
Post by yp
Post by Steve Marcus
appeal (at least on this "hypothetical" illustration of the issue it sure
looks that way), you can refile or file an RCE and request entry of that
amendment.
Post by yp
Any comments would be appreciated.
You're welcome.
Steve
Thank you Steve for your useful comments. On the other hand, can I go
ahead with the appeal and then if I get an unfavourable decision, I
would file the RCE. Is this acceptable?
Yes.
Post by yp
Also, should I call the Examiner and discuss with him the opportunity
of filing the amendment and/or the RCE? Namely, find out whether if I
do it, will he accept the claims?
You can try. It is doubtful that the examiner would have an interview at
this stage of the prosecution. On the other hand, if you file an RCE (and
as the submission required when filing an RCE, the amendment), the examiner
should have no problem conducting an interview prior to acting on the RCE.
Steve
The point in this case is that even without specifying the
characteristic of the surface, the examiner rejected the main claim on
a combination of three references. So I think that I can win this
appeal without filing an RCE at this stage.
The number of references applied in a Section 103 rejection is irrelevant.
The issue is whether the in fact suggest that the claimed invention would
have been obvious to one of ordinary skill in the art.
Post by yp
However, if the appeal
board rejects the application on this specific point, that the surface
is not sufficiently specified, then I can always file an RCE.
True.
Post by yp
On the other hand if I had a commitment from the Examiner, that an RCE
with the specified surface would render the application acceptable,
then I would prefer to go that route, to avoid waiting a couple of
years for the appeal decision.
You want your cake and eat it too. Unfortunately, after final rejection,
prosecution on the merits is closed. There is no good reason for an
examiner to take the time to study an amendment filed after the application
has been appealed the BPAI.
Post by yp
Now the Examiner's answer is signed by three examiners: the original
examiner who handled the prosecution, the supervisory patent examiner
in one art unit and, for some reason, a supervisory patent examiner in
another art unit whom I never encountered before. I don't trust the
original examiner, because he already promised to me something over
the phone and then reneged on his promise. Should I therefore call one
of the supervisory examiners?
For what reason? The additional signatory examiners have signed the
examiner's answer after having a mandatory appeal conference. Again, the
point is that you have no right to have an amendment filed at this point of
the prosecution considered. It has nothing to do with "trusting" the
examiner.
Steve
--
The above posting is neither a legal opinion nor legal advice,
because we do not have an attorney-client relationship, and
should not be construed as either. This posting does not
represent the opinion of my employer, but is merely my personal
view. To reply, delete _spamout_ and replace with the numeral 3
yp
2004-10-05 01:15:56 UTC
Permalink
On Sun, 3 Oct 2004 20:27:45 -0400, "Steve Marcus"
Post by yp
Post by yp
On Sat, 2 Oct 2004 19:05:04 -0400, "Steve Marcus"
Post by yp
Post by yp
On Sat, 2 Oct 2004 08:42:50 -0400, "Steve Marcus"
Post by Steve Marcus
Post by yp
I am still struggling with the appeal case which I already mentioned
previously.
I filed an Appellant's Brief and have now received the Examiner's
Answer. The Examiner generally re-hashed the same arguments as were
previously presented during the prosecution and has indicated that
"For the above reasons, it is believed that the rejections should be
sustained"
In arguing, however, the remarks that were made in the Appellant's
"In response to appellant's argument that the references fail to
show
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
certain features of appellant's invention, it is noted that the
features upon which appellant relies are not recited in the rejected
claims. Although the claims are interpreted in light of the
specification, limitations from the specification are not read into
the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed.
Cir. 1993)"
I will not, of course indicate the specific feature referred to by
the
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
Examiner, but I will mention something equivalent. In the references
it was required that the surfaces be, let us say "corrugated" in
order
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
for the system to work. In appellant's case the surfaces are
non-corrugated. This is clear from the disclosure, but since it is a
"negative characteristic" (not having something) it was not
indicated
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
as such in the claims.
If a limitation is not in the claims, you cannot rely upon that
limitation
Post by yp
Post by Steve Marcus
for patentability.
Certainly, the claims could have described the surface (per your
hypothetical example) as being "substantially planar." An argument
that
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
this limitation distinguishes over references showing a corrugated
surface
Post by yp
Post by Steve Marcus
would have been successful; note that once the limitation is in the
claim,
Post by yp
Post by Steve Marcus
it is proper to refer to the specification as to its meaning.
Post by yp
However, there would certainly be no objection to specify this
negative characteristic in the claims, namely that the surfaces are
non-corrugated.
In CFR 1.193(b), it is stated that the appellant may file a reply
brief directed only to such new points of argument as may be raised
by
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
the examiner's answer. ........ and that ... such reply may be
accompanied by any amendment or material appropriate to the new
ground.
Could I now file an amendment to the claims wherein I would specify
that the surfaces are "non-corrugated"?
You can file the amendment. But it will certainly be refused entry.
If, upon rethinking your position, you now understand that you will
lose
Post by yp
Post by yp
the
Post by yp
Post by Steve Marcus
appeal (at least on this "hypothetical" illustration of the issue it
sure
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
looks that way), you can refile or file an RCE and request entry of
that
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
amendment.
Post by yp
Any comments would be appreciated.
You're welcome.
Steve
Thank you Steve for your useful comments. On the other hand, can I go
ahead with the appeal and then if I get an unfavourable decision, I
would file the RCE. Is this acceptable?
Yes.
Post by yp
Also, should I call the Examiner and discuss with him the opportunity
of filing the amendment and/or the RCE? Namely, find out whether if I
do it, will he accept the claims?
You can try. It is doubtful that the examiner would have an interview at
this stage of the prosecution. On the other hand, if you file an RCE
(and
Post by yp
Post by yp
as the submission required when filing an RCE, the amendment), the
examiner
Post by yp
Post by yp
should have no problem conducting an interview prior to acting on the
RCE.
Post by yp
Post by yp
Steve
The point in this case is that even without specifying the
characteristic of the surface, the examiner rejected the main claim on
a combination of three references. So I think that I can win this
appeal without filing an RCE at this stage.
The number of references applied in a Section 103 rejection is irrelevant.
The issue is whether the in fact suggest that the claimed invention would
have been obvious to one of ordinary skill in the art.
Post by yp
However, if the appeal
board rejects the application on this specific point, that the surface
is not sufficiently specified, then I can always file an RCE.
True.
Post by yp
On the other hand if I had a commitment from the Examiner, that an RCE
with the specified surface would render the application acceptable,
then I would prefer to go that route, to avoid waiting a couple of
years for the appeal decision.
You want your cake and eat it too. Unfortunately, after final rejection,
prosecution on the merits is closed. There is no good reason for an
examiner to take the time to study an amendment filed after the application
has been appealed the BPAI.
Post by yp
Now the Examiner's answer is signed by three examiners: the original
examiner who handled the prosecution, the supervisory patent examiner
in one art unit and, for some reason, a supervisory patent examiner in
another art unit whom I never encountered before. I don't trust the
original examiner, because he already promised to me something over
the phone and then reneged on his promise. Should I therefore call one
of the supervisory examiners?
For what reason? The additional signatory examiners have signed the
examiner's answer after having a mandatory appeal conference. Again, the
point is that you have no right to have an amendment filed at this point of
the prosecution considered. It has nothing to do with "trusting" the
examiner.
Steve
OK Steve, I now understand your point. When in CFR 1.193(b) it is
stated "such reply may be accompanied by any AMENDMENT or material
appropriate to the new ground, this does not mean amendment to the
claims, but rather amendment to the appellant's brief. Right?
Steve Marcus
2004-10-06 09:24:15 UTC
Permalink
Post by yp
On Sun, 3 Oct 2004 20:27:45 -0400, "Steve Marcus"
Post by yp
Post by yp
On Sat, 2 Oct 2004 19:05:04 -0400, "Steve Marcus"
Post by yp
Post by yp
On Sat, 2 Oct 2004 08:42:50 -0400, "Steve Marcus"
Post by Steve Marcus
Post by yp
I am still struggling with the appeal case which I already mentioned
previously.
I filed an Appellant's Brief and have now received the Examiner's
Answer. The Examiner generally re-hashed the same arguments as were
previously presented during the prosecution and has indicated that
"For the above reasons, it is believed that the rejections should be
sustained"
In arguing, however, the remarks that were made in the Appellant's
"In response to appellant's argument that the references fail to
show
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
certain features of appellant's invention, it is noted that the
features upon which appellant relies are not recited in the rejected
claims. Although the claims are interpreted in light of the
specification, limitations from the specification are not read into
the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed.
Cir. 1993)"
I will not, of course indicate the specific feature referred to by
the
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
Examiner, but I will mention something equivalent. In the references
it was required that the surfaces be, let us say "corrugated" in
order
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
for the system to work. In appellant's case the surfaces are
non-corrugated. This is clear from the disclosure, but since it is a
"negative characteristic" (not having something) it was not
indicated
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
as such in the claims.
If a limitation is not in the claims, you cannot rely upon that
limitation
Post by yp
Post by Steve Marcus
for patentability.
Certainly, the claims could have described the surface (per your
hypothetical example) as being "substantially planar." An argument
that
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
this limitation distinguishes over references showing a corrugated
surface
Post by yp
Post by Steve Marcus
would have been successful; note that once the limitation is in the
claim,
Post by yp
Post by Steve Marcus
it is proper to refer to the specification as to its meaning.
Post by yp
However, there would certainly be no objection to specify this
negative characteristic in the claims, namely that the surfaces are
non-corrugated.
In CFR 1.193(b), it is stated that the appellant may file a reply
brief directed only to such new points of argument as may be raised
by
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
the examiner's answer. ........ and that ... such reply may be
accompanied by any amendment or material appropriate to the new
ground.
Could I now file an amendment to the claims wherein I would specify
that the surfaces are "non-corrugated"?
You can file the amendment. But it will certainly be refused entry.
If, upon rethinking your position, you now understand that you will
lose
Post by yp
Post by yp
the
Post by yp
Post by Steve Marcus
appeal (at least on this "hypothetical" illustration of the issue it
sure
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
looks that way), you can refile or file an RCE and request entry of
that
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
amendment.
Post by yp
Any comments would be appreciated.
You're welcome.
Steve
Thank you Steve for your useful comments. On the other hand, can I go
ahead with the appeal and then if I get an unfavourable decision, I
would file the RCE. Is this acceptable?
Yes.
Post by yp
Also, should I call the Examiner and discuss with him the opportunity
of filing the amendment and/or the RCE? Namely, find out whether if I
do it, will he accept the claims?
You can try. It is doubtful that the examiner would have an interview at
this stage of the prosecution. On the other hand, if you file an RCE
(and
Post by yp
Post by yp
as the submission required when filing an RCE, the amendment), the
examiner
Post by yp
Post by yp
should have no problem conducting an interview prior to acting on the
RCE.
Post by yp
Post by yp
Steve
The point in this case is that even without specifying the
characteristic of the surface, the examiner rejected the main claim on
a combination of three references. So I think that I can win this
appeal without filing an RCE at this stage.
The number of references applied in a Section 103 rejection is irrelevant.
The issue is whether the in fact suggest that the claimed invention would
have been obvious to one of ordinary skill in the art.
Post by yp
However, if the appeal
board rejects the application on this specific point, that the surface
is not sufficiently specified, then I can always file an RCE.
True.
Post by yp
On the other hand if I had a commitment from the Examiner, that an RCE
with the specified surface would render the application acceptable,
then I would prefer to go that route, to avoid waiting a couple of
years for the appeal decision.
You want your cake and eat it too. Unfortunately, after final rejection,
prosecution on the merits is closed. There is no good reason for an
examiner to take the time to study an amendment filed after the application
has been appealed the BPAI.
Post by yp
Now the Examiner's answer is signed by three examiners: the original
examiner who handled the prosecution, the supervisory patent examiner
in one art unit and, for some reason, a supervisory patent examiner in
another art unit whom I never encountered before. I don't trust the
original examiner, because he already promised to me something over
the phone and then reneged on his promise. Should I therefore call one
of the supervisory examiners?
For what reason? The additional signatory examiners have signed the
examiner's answer after having a mandatory appeal conference. Again, the
point is that you have no right to have an amendment filed at this point of
the prosecution considered. It has nothing to do with "trusting" the
examiner.
Steve
OK Steve, I now understand your point. When in CFR 1.193(b) it is
stated "such reply may be accompanied by any AMENDMENT or material
appropriate to the new ground, this does not mean amendment to the
claims, but rather amendment to the appellant's brief. Right?
37 CFR 1.193(b) no longer exists as of September 13, 2004. See 37 CFR
41.41, effective 9/13/04:

§ 41.41 Reply brief. (a)(1)Appellant may file a reply brief to an examiner's
answer within two months from the date of the examiner's answer.

(2) A reply brief shall not include any new or non-admitted amendment, or
any new or non-admitted affidavit or other evidence. See § 1.116 of this
title for amendments, affidavits or other evidence filed after final action
but before or on the same date of filing an appeal and § 41.33 for
amendments, affidavits or other evidence filed after the date of filing the
appeal.

(b) A reply brief that is not in compliance with paragraph (a) of this
section will not be considered. Appellant will be notified if a reply brief
is not in compliance with paragraph (a) of this section.

(c) Extensions of time under § 1.136 (a) of this title for patent
applications are not applicable to the time period set forth in this
section. See § 1.136 (b) of this title for extensions of time to reply for
patent applications and § 1.550 (c) of this title for extensions of time to
reply for ex parte reexamination proceedings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]

However, even with respect to the previous regulation, you could *file* an
amendment to the claims, specification, etc., but entry was *not* a matter
of right. Such amendment was after final rejection, and subject to the same
policies regarding entry.
See MPEP 1208.03, which has not yet been amended to discuss the new
regulations, and which contains the following statement of practice re
amendments submitted with a reply brief:
"Amendments, affidavits, and/or other evidence must be submitted in papers
separate from the reply brief, and the entry of such papers is subject to
the provisions of 37 CFR 1.116 and 37 CFR 1.195. A paper that contains an
amendment (or evidence) is not a reply brief within the meaning of 37 CFR
1.193(b). Such a paper will not be entitled to entry simply because it is
characterized as a reply brief." (Emphasis in the original.)

The MPEP is available at:
http://www.uspto.gov/web/offices/pac/mpep/index.htm

and the new regulations are available at:

http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf


Steve Marcus
--
The above posting is neither a legal opinion nor legal advice,
because we do not have an attorney-client relationship, and
should not be construed as either. This posting does not
represent the opinion of my employer, but is merely my personal
view. To reply, delete _spamout_ and replace with the numeral 3
yp
2004-10-06 23:34:27 UTC
Permalink
On Wed, 6 Oct 2004 05:24:15 -0400, "Steve Marcus"
Post by yp
Post by yp
On Sun, 3 Oct 2004 20:27:45 -0400, "Steve Marcus"
Post by yp
Post by yp
On Sat, 2 Oct 2004 19:05:04 -0400, "Steve Marcus"
Post by yp
Post by yp
On Sat, 2 Oct 2004 08:42:50 -0400, "Steve Marcus"
Post by Steve Marcus
Post by yp
I am still struggling with the appeal case which I already
mentioned
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
previously.
I filed an Appellant's Brief and have now received the
Examiner's
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
Answer. The Examiner generally re-hashed the same arguments as
were
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
previously presented during the prosecution and has indicated
that
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
"For the above reasons, it is believed that the rejections should
be
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
sustained"
In arguing, however, the remarks that were made in the
Appellant's
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
"In response to appellant's argument that the references fail to
show
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
certain features of appellant's invention, it is noted that the
features upon which appellant relies are not recited in the
rejected
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
claims. Although the claims are interpreted in light of the
specification, limitations from the specification are not read
into
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057
(Fed.
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
Cir. 1993)"
I will not, of course indicate the specific feature referred to
by
Post by yp
Post by yp
the
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
Examiner, but I will mention something equivalent. In the
references
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
it was required that the surfaces be, let us say "corrugated" in
order
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
for the system to work. In appellant's case the surfaces are
non-corrugated. This is clear from the disclosure, but since it
is a
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
"negative characteristic" (not having something) it was not
indicated
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
as such in the claims.
If a limitation is not in the claims, you cannot rely upon that
limitation
Post by yp
Post by Steve Marcus
for patentability.
Certainly, the claims could have described the surface (per your
hypothetical example) as being "substantially planar." An argument
that
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
this limitation distinguishes over references showing a corrugated
surface
Post by yp
Post by Steve Marcus
would have been successful; note that once the limitation is in the
claim,
Post by yp
Post by Steve Marcus
it is proper to refer to the specification as to its meaning.
Post by yp
However, there would certainly be no objection to specify this
negative characteristic in the claims, namely that the surfaces
are
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
non-corrugated.
In CFR 1.193(b), it is stated that the appellant may file a reply
brief directed only to such new points of argument as may be
raised
Post by yp
Post by yp
by
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
the examiner's answer. ........ and that ... such reply may be
accompanied by any amendment or material appropriate to the new
ground.
Could I now file an amendment to the claims wherein I would
specify
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
that the surfaces are "non-corrugated"?
You can file the amendment. But it will certainly be refused
entry.
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
If, upon rethinking your position, you now understand that you will
lose
Post by yp
Post by yp
the
Post by yp
Post by Steve Marcus
appeal (at least on this "hypothetical" illustration of the issue
it
Post by yp
Post by yp
sure
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
looks that way), you can refile or file an RCE and request entry of
that
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
amendment.
Post by yp
Any comments would be appreciated.
You're welcome.
Steve
Thank you Steve for your useful comments. On the other hand, can I
go
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
ahead with the appeal and then if I get an unfavourable decision, I
would file the RCE. Is this acceptable?
Yes.
Post by yp
Also, should I call the Examiner and discuss with him the
opportunity
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
of filing the amendment and/or the RCE? Namely, find out whether if
I
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
do it, will he accept the claims?
You can try. It is doubtful that the examiner would have an interview
at
Post by yp
Post by yp
Post by yp
Post by yp
this stage of the prosecution. On the other hand, if you file an RCE
(and
Post by yp
Post by yp
as the submission required when filing an RCE, the amendment), the
examiner
Post by yp
Post by yp
should have no problem conducting an interview prior to acting on the
RCE.
Post by yp
Post by yp
Steve
The point in this case is that even without specifying the
characteristic of the surface, the examiner rejected the main claim on
a combination of three references. So I think that I can win this
appeal without filing an RCE at this stage.
The number of references applied in a Section 103 rejection is
irrelevant.
Post by yp
Post by yp
The issue is whether the in fact suggest that the claimed invention would
have been obvious to one of ordinary skill in the art.
Post by yp
However, if the appeal
board rejects the application on this specific point, that the surface
is not sufficiently specified, then I can always file an RCE.
True.
Post by yp
On the other hand if I had a commitment from the Examiner, that an RCE
with the specified surface would render the application acceptable,
then I would prefer to go that route, to avoid waiting a couple of
years for the appeal decision.
You want your cake and eat it too. Unfortunately, after final rejection,
prosecution on the merits is closed. There is no good reason for an
examiner to take the time to study an amendment filed after the
application
Post by yp
Post by yp
has been appealed the BPAI.
Post by yp
Now the Examiner's answer is signed by three examiners: the original
examiner who handled the prosecution, the supervisory patent examiner
in one art unit and, for some reason, a supervisory patent examiner in
another art unit whom I never encountered before. I don't trust the
original examiner, because he already promised to me something over
the phone and then reneged on his promise. Should I therefore call one
of the supervisory examiners?
For what reason? The additional signatory examiners have signed the
examiner's answer after having a mandatory appeal conference. Again, the
point is that you have no right to have an amendment filed at this point
of
Post by yp
Post by yp
the prosecution considered. It has nothing to do with "trusting" the
examiner.
Steve
OK Steve, I now understand your point. When in CFR 1.193(b) it is
stated "such reply may be accompanied by any AMENDMENT or material
appropriate to the new ground, this does not mean amendment to the
claims, but rather amendment to the appellant's brief. Right?
37 CFR 1.193(b) no longer exists as of September 13, 2004. See 37 CFR
§ 41.41 Reply brief. (a)(1)Appellant may file a reply brief to an examiner's
answer within two months from the date of the examiner's answer.
(2) A reply brief shall not include any new or non-admitted amendment, or
any new or non-admitted affidavit or other evidence. See § 1.116 of this
title for amendments, affidavits or other evidence filed after final action
but before or on the same date of filing an appeal and § 41.33 for
amendments, affidavits or other evidence filed after the date of filing the
appeal.
(b) A reply brief that is not in compliance with paragraph (a) of this
section will not be considered. Appellant will be notified if a reply brief
is not in compliance with paragraph (a) of this section.
(c) Extensions of time under § 1.136 (a) of this title for patent
applications are not applicable to the time period set forth in this
section. See § 1.136 (b) of this title for extensions of time to reply for
patent applications and § 1.550 (c) of this title for extensions of time to
reply for ex parte reexamination proceedings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
However, even with respect to the previous regulation, you could *file* an
amendment to the claims, specification, etc., but entry was *not* a matter
of right. Such amendment was after final rejection, and subject to the same
policies regarding entry.
See MPEP 1208.03, which has not yet been amended to discuss the new
regulations, and which contains the following statement of practice re
"Amendments, affidavits, and/or other evidence must be submitted in papers
separate from the reply brief, and the entry of such papers is subject to
the provisions of 37 CFR 1.116 and 37 CFR 1.195. A paper that contains an
amendment (or evidence) is not a reply brief within the meaning of 37 CFR
1.193(b). Such a paper will not be entitled to entry simply because it is
characterized as a reply brief." (Emphasis in the original.)
http://www.uspto.gov/web/offices/pac/mpep/index.htm
http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf
Steve Marcus
Thank you Steve. This is indeed very interesting and very recent.
There appears to be a significant difference in the scope of the reply
brief that the appellant can now file. Whereas in the previous section
1.193(b) the reply could be directed only to the new points of
argument raised in the examiner's answer, there is no such restriction
in the new rule 41.41, and thus the reply brief can now include a
counterargument to everything the examiner has said in the examiner's
answer.

I presume that these new rules now apply to all appeals, including
those filed under the old rules. Is this correct?
Steve Marcus
2004-10-07 09:07:22 UTC
Permalink
Post by yp
On Wed, 6 Oct 2004 05:24:15 -0400, "Steve Marcus"
Post by yp
Post by yp
On Sun, 3 Oct 2004 20:27:45 -0400, "Steve Marcus"
Post by yp
Post by yp
On Sat, 2 Oct 2004 19:05:04 -0400, "Steve Marcus"
Post by yp
Post by yp
On Sat, 2 Oct 2004 08:42:50 -0400, "Steve Marcus"
Post by Steve Marcus
Post by yp
I am still struggling with the appeal case which I already
mentioned
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
previously.
I filed an Appellant's Brief and have now received the
Examiner's
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
Answer. The Examiner generally re-hashed the same arguments as
were
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
previously presented during the prosecution and has indicated
that
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
"For the above reasons, it is believed that the rejections should
be
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
sustained"
In arguing, however, the remarks that were made in the
Appellant's
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
"In response to appellant's argument that the references fail to
show
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
certain features of appellant's invention, it is noted that the
features upon which appellant relies are not recited in the
rejected
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
claims. Although the claims are interpreted in light of the
specification, limitations from the specification are not read
into
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057
(Fed.
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
Cir. 1993)"
I will not, of course indicate the specific feature referred to
by
Post by yp
Post by yp
the
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
Examiner, but I will mention something equivalent. In the
references
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
it was required that the surfaces be, let us say "corrugated" in
order
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
for the system to work. In appellant's case the surfaces are
non-corrugated. This is clear from the disclosure, but since it
is a
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
"negative characteristic" (not having something) it was not
indicated
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
as such in the claims.
If a limitation is not in the claims, you cannot rely upon that
limitation
Post by yp
Post by Steve Marcus
for patentability.
Certainly, the claims could have described the surface (per your
hypothetical example) as being "substantially planar." An argument
that
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
this limitation distinguishes over references showing a corrugated
surface
Post by yp
Post by Steve Marcus
would have been successful; note that once the limitation is in the
claim,
Post by yp
Post by Steve Marcus
it is proper to refer to the specification as to its meaning.
Post by yp
However, there would certainly be no objection to specify this
negative characteristic in the claims, namely that the surfaces
are
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
non-corrugated.
In CFR 1.193(b), it is stated that the appellant may file a reply
brief directed only to such new points of argument as may be
raised
Post by yp
Post by yp
by
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
the examiner's answer. ........ and that ... such reply may be
accompanied by any amendment or material appropriate to the new
ground.
Could I now file an amendment to the claims wherein I would
specify
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
Post by yp
that the surfaces are "non-corrugated"?
You can file the amendment. But it will certainly be refused
entry.
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
If, upon rethinking your position, you now understand that you will
lose
Post by yp
Post by yp
the
Post by yp
Post by Steve Marcus
appeal (at least on this "hypothetical" illustration of the issue
it
Post by yp
Post by yp
sure
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
looks that way), you can refile or file an RCE and request entry of
that
Post by yp
Post by yp
Post by yp
Post by Steve Marcus
amendment.
Post by yp
Any comments would be appreciated.
You're welcome.
Steve
Thank you Steve for your useful comments. On the other hand, can I
go
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
ahead with the appeal and then if I get an unfavourable decision, I
would file the RCE. Is this acceptable?
Yes.
Post by yp
Also, should I call the Examiner and discuss with him the
opportunity
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
of filing the amendment and/or the RCE? Namely, find out whether if
I
Post by yp
Post by yp
Post by yp
Post by yp
Post by yp
do it, will he accept the claims?
You can try. It is doubtful that the examiner would have an interview
at
Post by yp
Post by yp
Post by yp
Post by yp
this stage of the prosecution. On the other hand, if you file an RCE
(and
Post by yp
Post by yp
as the submission required when filing an RCE, the amendment), the
examiner
Post by yp
Post by yp
should have no problem conducting an interview prior to acting on the
RCE.
Post by yp
Post by yp
Steve
The point in this case is that even without specifying the
characteristic of the surface, the examiner rejected the main claim on
a combination of three references. So I think that I can win this
appeal without filing an RCE at this stage.
The number of references applied in a Section 103 rejection is
irrelevant.
Post by yp
Post by yp
The issue is whether the in fact suggest that the claimed invention would
have been obvious to one of ordinary skill in the art.
Post by yp
However, if the appeal
board rejects the application on this specific point, that the surface
is not sufficiently specified, then I can always file an RCE.
True.
Post by yp
On the other hand if I had a commitment from the Examiner, that an RCE
with the specified surface would render the application acceptable,
then I would prefer to go that route, to avoid waiting a couple of
years for the appeal decision.
You want your cake and eat it too. Unfortunately, after final rejection,
prosecution on the merits is closed. There is no good reason for an
examiner to take the time to study an amendment filed after the
application
Post by yp
Post by yp
has been appealed the BPAI.
Post by yp
Now the Examiner's answer is signed by three examiners: the original
examiner who handled the prosecution, the supervisory patent examiner
in one art unit and, for some reason, a supervisory patent examiner in
another art unit whom I never encountered before. I don't trust the
original examiner, because he already promised to me something over
the phone and then reneged on his promise. Should I therefore call one
of the supervisory examiners?
For what reason? The additional signatory examiners have signed the
examiner's answer after having a mandatory appeal conference. Again, the
point is that you have no right to have an amendment filed at this point
of
Post by yp
Post by yp
the prosecution considered. It has nothing to do with "trusting" the
examiner.
Steve
OK Steve, I now understand your point. When in CFR 1.193(b) it is
stated "such reply may be accompanied by any AMENDMENT or material
appropriate to the new ground, this does not mean amendment to the
claims, but rather amendment to the appellant's brief. Right?
37 CFR 1.193(b) no longer exists as of September 13, 2004. See 37 CFR
§ 41.41 Reply brief. (a)(1)Appellant may file a reply brief to an examiner's
answer within two months from the date of the examiner's answer.
(2) A reply brief shall not include any new or non-admitted amendment, or
any new or non-admitted affidavit or other evidence. See § 1.116 of this
title for amendments, affidavits or other evidence filed after final action
but before or on the same date of filing an appeal and § 41.33 for
amendments, affidavits or other evidence filed after the date of filing the
appeal.
(b) A reply brief that is not in compliance with paragraph (a) of this
section will not be considered. Appellant will be notified if a reply brief
is not in compliance with paragraph (a) of this section.
(c) Extensions of time under § 1.136 (a) of this title for patent
applications are not applicable to the time period set forth in this
section. See § 1.136 (b) of this title for extensions of time to reply for
patent applications and § 1.550 (c) of this title for extensions of time to
reply for ex parte reexamination proceedings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
However, even with respect to the previous regulation, you could *file* an
amendment to the claims, specification, etc., but entry was *not* a matter
of right. Such amendment was after final rejection, and subject to the same
policies regarding entry.
See MPEP 1208.03, which has not yet been amended to discuss the new
regulations, and which contains the following statement of practice re
"Amendments, affidavits, and/or other evidence must be submitted in papers
separate from the reply brief, and the entry of such papers is subject to
the provisions of 37 CFR 1.116 and 37 CFR 1.195. A paper that contains an
amendment (or evidence) is not a reply brief within the meaning of 37 CFR
1.193(b). Such a paper will not be entitled to entry simply because it is
characterized as a reply brief." (Emphasis in the original.)
http://www.uspto.gov/web/offices/pac/mpep/index.htm
http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf
Steve Marcus
Thank you Steve. This is indeed very interesting and very recent.
There appears to be a significant difference in the scope of the reply
brief that the appellant can now file. Whereas in the previous section
1.193(b) the reply could be directed only to the new points of
argument raised in the examiner's answer, there is no such restriction
in the new rule 41.41, and thus the reply brief can now include a
counterargument to everything the examiner has said in the examiner's
answer.
I presume that these new rules now apply to all appeals, including
those filed under the old rules. Is this correct?
The effective date of the new rules is 9/13/04. I have been given no
guidance, and the regs are silent, vis-a-vis at what point a previously
initiated appeal is governed by the new regs. Given that, my guess would be
that at whatever point one is in the procedure, after 9/13/04, the new regs
govern the next step. Nota bene: **guess**.

Steve
--
The above posting is neither a legal opinion nor legal advice,
because we do not have an attorney-client relationship, and
should not be construed as either. This posting does not
represent the opinion of my employer, but is merely my personal
view. To reply, delete _spamout_ and replace with the numeral 3
Continue reading on narkive:
Search results for 'U.S. Appeal Practice' (newsgroups and mailing lists)
23
replies
Controversial Muslim cleric Abu Hamza al-Masri has been jailed for seven years after being found guilty of inciting murder and race hate. - US authorities are seeking the cleric's extradition for terror-related matters. - Under the current law, the cleric will not be extradited until he has finished serving his sentence in the UK.
started 2008-06-15 19:43:59 UTC
alt.religion.islam
21
replies
Abu Hamza, radical Muzlim cleric, refused permission to appeal extradition - http://www.telegraph.co.uk/news/2447961/Abu-Hamza,-radical-Muslim-cleric,-to-be-extradited-to-US.html
started 2008-08-24 07:31:25 UTC
soc.culture.iranian
41
replies
From: Moslem cartoon character mohammed was a paedophile 6th century warlord who cooked up a false religion in order to supplement brutality as a means of bringing people under subjection <ana_faris_bila_jawad@hotmail.com>,Newsgroups: alt.religion.islam,Subject: Re: The radical Muslim cleric Abu Hamza has been refused permission to appeal to the House of Lords over a decision to extradite him to America on terrorism charges. - The 49-year-old Egyptian born Muslim cleric, who is currently serving seven years in jail for soliciting murder and stirring up racial hatred, last month lost his High Court claim that extradition would be a breach of his human rights. - http://www.telegraph.co.uk/news/2447961/Abu-Hamza,-radical-Muslim-cleric,-to-be-extradited-to-US.html,Control: cancel <8IednUWt-aIaWyPVnZ2dnUVZ8uidnZ2d@bt.com>,Lines: 0,MIME-Version: 1.0,Content-Type: text/plain;, charset="iso-8859-1",Content-Transfer-Encoding: 7bit,X-Newsreader: Microsoft Outlook Express 6.00.2900.3264,X-MimeOLE: Produced By Microsoft MimeOLE V6.00.2900.5579,Message-ID: <jLzvk.8639$in.1243@read1.cgocable.net>,Date: Wed, 03 Sep 2008 17:24:31 GMT,NNTP-Posting-Host: 24.141.69.199,X-Complaints-To: news@cogeco.net,X-Trace: read1.cgocable.net 1220462671 24.141.69.199 (Wed, 03 Sep 2008 13:24:31 EDT),NNTP-Posting-Date: Wed, 03 Sep 2008 13:24:31 EDT,Organization: Cogeco Cable,Bytes: 1626
started 2008-09-03 18:23:07 UTC
soc.culture.iranian
104
replies
Free Notice of Appeal Form
started 2004-05-29 17:25:36 UTC
alt.self-help-law
23
replies
Controversial Muslim cleric Abu Hamza al-Masri has been jailed for seven years after being found guilty of inciting murder and race hate. - US authorities are seeking the cleric's extradition for terror-related matters. - Under the current law, the cleric will not be extradited until he has finished serving his sentence in the UK.
started 2008-06-15 19:43:59 UTC
soc.culture.iranian
Loading...