tag:blogger.com,1999:blog-6733236595417664807.post7744255978996964305..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: Board finds non-analogous art when Examiner mistakes advantage in reference with problem solved by referenceKaren G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger7125tag:blogger.com,1999:blog-6733236595417664807.post-10752822392913141292015-04-21T23:40:01.184-04:002015-04-21T23:40:01.184-04:00Thank you, Karen.Thank you, Karen.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-81564086214665651242015-03-18T13:54:27.346-04:002015-03-18T13:54:27.346-04:00As usual Karen, nice find! Thanks.As usual Karen, nice find! Thanks.Step Backhttps://www.blogger.com/profile/06178091823442339760noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-42219493320517967282015-03-17T21:44:05.943-04:002015-03-17T21:44:05.943-04:00As far as I could tell, the policy was about reduc...<i>As far as I could tell, the policy was about reducing the cost of endless rounds of prosecution rather than avoiding PTA.</i><br />This is what appealing is for. If you (or your client) gets a reputation for always doling out an RCE before appeal, then that is what you will get.<br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-52669796996065529082015-03-17T12:01:19.288-04:002015-03-17T12:01:19.288-04:00>get an examiner to write as much as possible
... >get an examiner to write as much as possible<br /><br />Absolutely! In my experience, this does require the Applicant to put something substantive on record -- the Examiner typically expands only when the Applicant goes beyond the naked assertion "does not teach." IOW, you can't count on the Examiner to do any more than address whatever specific, substantive arguments you make.<br /><br />>limited time to develop [issues] before you must RCE or appeal.<br />>Filing a RCE permanently tolls type-B PTA <br /><br />Sure. And different clients take different approaches to this. [Which is why I characterized it as "personal" and why I consider it more of a "philosophy" than strategy.]<br /><br />The clients I work for aren't as concerned about patent term as about other factors, perceiving the bulk of their patents to have more value at the start of term rather than end of term. <br /><br />I have worked for clients with a one-RCE-then-appeal policy. As far as I could tell, the policy was about reducing the cost of endless rounds of prosecution rather than avoiding PTA.<br /><br />Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-2017249673203200012015-03-16T21:36:47.023-04:002015-03-16T21:36:47.023-04:00Make the argument.
Oh, I make them. However, you ...<i>Make the argument.</i><br />Oh, I make them. However, you still get the lifer APJ who writes "the Examiner stated that the prior art is analogous because they both require a power supply" -- when my art is a hard drive and the applied prior art is an electric typewriter.<br /><br /><i>Meaning prosecute with an eye to what arguments work before the Board? </i><br />ALWAYS write your arguments with an eye to what works before the Board -- assuming that you have a client that will give you leeway to appeal when necessary. You make the argument -- even if it is over the Examiner's head, and when you appeal, you write "Appellants argued X and the Examiner didn't respond to X (or poorly responded to X)." If the Examiner writes an Answer, you'll then pounce on what is probably a poor misstatement of the law and/or facts.<br /><br />There may be times when I'll hold back some arguments as to dependent claims during normal prosecution (e.g., if I already have plenty of arguments already made as to the independent claims), but I never hold anything back as to the independent claims.<br /><br /><i>My personal philosophy is to appeal once the issues are fully developed, but not before.</i><br />Two points. First (and consistent with my statement above), you should be developing all the issues from the get go. My personal philosophy is to get an examiner to write as much as possible because the more he/she writes, the more errors is reasoning and/or facts and/or law I'll be able to find.<br />Second, waiting for all the issues to fully develop may be to late. You only have a very limited time to develop them before you are forced to either file a RCE or appeal. Filing a RCE permanently tolls type-B PTA (which could add years of term to your clients patent -- once issued). If I think I have decent arguments to make before the Board (no matter how well the issues are developed), I'll appeal.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-39102271901969655202015-03-13T12:07:46.813-04:002015-03-13T12:07:46.813-04:00>Make the argument.
Meaning prosecute with an ...>Make the argument.<br /><br />Meaning prosecute with an eye to what arguments work before the Board? <br /><br />I suppose you could pursue an Examiner-centric prosecution strategy up to the time of appeal, then switch to a Board-centric strategy in the Appeal Brief. E.g., save your Non-Analogous Art and Rationale-To-Combine arguments for the Board. <br /><br />OTOH, a completely understanding of the Examiner's position gives you the best chance of winning. Yet many Examiners don't really explain until you make explicit arguments. <br /><br />So if you wait until the Appeal Brief to argue NAA or RTC, then the Answer will probably be the first time you get a good explanation of the rejection. Which gives you only one shot -- the Reply Brief -- to make a compelling argument based on a full understanding. <br /><br />My personal philosophy is to appeal once the issues are fully developed, but not before. So I argue sooner rather than later. <br /><br />>the examiner wasn't persuaded, but 3 lifer APJ's were.<br /><br />FWIW, my gut tells me a Non-Analogous Art argument works with Examiners better than a Rationale-To-Combine argument. NAA doesn't win a lot, but more than RTC. Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-58126970291476029152015-03-13T09:09:29.525-04:002015-03-13T09:09:29.525-04:00This one should be read by all the practitioners w...This one should be read by all the practitioners who say, "I never argue non-analogous art because the examiner is never persuaded by it." Yeah, the examiner wasn't persuaded, but 3 lifer APJ's were.<br /><br />Make the argument.AAA JJnoreply@blogger.com