Sunday, February 21, 2010

Board says don't lose sight of the forest for the trees

The decision Ex parte Gaertner includes an interesting comment from the BPAI:
The lengthy positions of Appellants and the Examiner in the Brief, Answer, and Reply Brief fail to focus upon the issues before us in this appeal and merely present arguments about arguments, essentially losing sight of the forest for the trees.
The Board went on to state what it considered to be the real issue in the case, and then made Findings of Fact about what the reference did and did not teach. (For what it's worth, the rejection of the independent claims was reversed.)

Okay, I wouldn't want my brief to be characterized as "losing sight of the forest for the trees." But I can certainly understand how it happens. As an Applicant, I feel virtually compelled to address every point made by the Examiner, in every response. And since the Examiner never explicitly concedes a point, or withdraws an argument, I sometimes also repeat what I said before — just to cover all my bases. By the time I get to appeal, the Brief could easily devolve into "arguments about arguments".

In cases involving protracted prosecution, an arguments section that clearly spells out and summarizes the main point(s) of disagreement can help to "keep the forest in sight." In fact, I see value in doing this summary-of-main-points in a normal response, not just in an appeal. After all, I want the Examiner to understand my arguments so that I can avoid going to the Board.

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