tag:blogger.com,1999:blog-6733236595417664807.post7230838461545179515..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: BPAI ignores Applicant arguments about commercial embodiment when not clear that embodiment actually corresponds to referenceKaren G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger4125tag:blogger.com,1999:blog-6733236595417664807.post-38153818804933221872011-07-05T16:06:33.055-04:002011-07-05T16:06:33.055-04:00"Applicant was on the right track – the Board..."Applicant was on the right track – the Board did not say "you can't introduce evidence related to the reference that is outside the four corners of the reference."<br />"<br /><br />yeah they didn't say that, but they probably should have. You can of course introduce evidence as to what a person of skill would understand the original reference to be saying. <br /><br />"Finally, make sure the reference commercial embodiment is actually prior art."<br /><br />I don't know if this is technically necessary. Just like you can present expert testimony after the fact, you can present evidence dated after the filing date that would indicate how one of skill would have interpreted the original reference. I would think anyway. <br /><br />"and you're forced to fight the issue of non-entry with a petition. "<br /><br />Gl with that. PTA better be very valuable to you.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-2120222880197244002011-07-04T21:58:53.546-04:002011-07-04T21:58:53.546-04:00Let's be clear, if the evidence is submitted w...Let's be clear, if the evidence is submitted with the notice of appeal, then rule 41.33(d) doesn't control. If the rejection is final, then rule 1.116 controls. If the rejection is not final, then rule 1.116 probably still controls, but that makes less sense to me (bc 116 is directed to final rejections).<br /><br />The Examiner doesn't have unlimited to discretion to enter or not enter evidence in those situations. He's bound both by rule 41.33d (if filed after NOAppeal) or rule 116 (if final before or with NOAppeal). 41.33d is almost impossible to satisfy. But rule 116 gives the examiner much less discretion. For example, if your appeal is in response to an Office Action raising new rejections, then you have shown, almost per se, good cause for not submitting the evidence earlier.Kipnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-2164562292583997192011-07-04T13:11:25.758-04:002011-07-04T13:11:25.758-04:00Still, entry/non-entry of evidence submitted with ...Still, entry/non-entry of evidence submitted with an appeal brief is within the province of the examiner, not the board.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-28472282003225342672011-07-04T12:08:45.778-04:002011-07-04T12:08:45.778-04:00I agree that there was insufficient evidence tying...I agree that there was insufficient evidence tying the commercial embodiment to the patent. A declaration from the assignee of the patent or the company producing the commercial embodiment would have been ideal though probably not actually obtainable in the "real world." Applicant had some good bits and pieces but not enough connecting them together.<br /><br />One basis for introducing new evidence into the appeal brief that worked for me was where the examiner made a new argument in her advisory action.Anonymousnoreply@blogger.com