So I'll start off 2011 with this list of "Top 10 Mistakes in Arguing on Appeal to the BPAI" :
- Conclusory assertion rather than argument with explanation
- Arguing outside the claims
- Failing to address Examiner's specific findings
- Not recognizing that the real issue is claim interpretation
- Failing to address the combination
- Arguing the Teaching, Suggestion or Motivation test
- Using attorney argument when evidence is required
- Using a declaration that amounts to opinion without factual support
- Arguments that ignore relevant case law
- Arguments about issues that aren't appealable
Also, I won't address the question of whether or not the BPAI is legally correct in treating these actions as mistakes that are damaging to the Applicant. For example, whether the BPAI is properly allowed to affirm simply because the Applicant didn't address an Examiner finding.
I'll follow up this list with other posts that go into more detail on each of these mistakes.