View unanswered posts | View active topics It is currently 2018-01-16 12:29:54



Reply to topic  [ 6 posts ] 
 To appeal or not to appeal to the CAFC? 
Author Message
Patent Practitioner

Joined: 2011-12-24 18:23:00
Posts: 104
Consider the following scenario in a single-claim application:

Examiner rejects the claim with a 102 rejection based on reference Aleph,
and also rejects the same claim with a 102 rejection based on reference Beth.

On appeal to the BPAI, the Board affirms the 102 rejection based on reference Aleph,
and also affirms the 102 rejection based on reference Beth.

Now the applicant has the option of filing a continuation amending to overcome the rejections, and/or appealing to the CAFC.
The amendment needed to overcome Aleph would be different than the amendment needed to overcome Beth.

Suppose the applicant gauges his chances of success before the CAFC to be 10% with respect to the Aleph affirmance (although he disagrees with the Board's conclusion, he can see the CAFC upholding the Board's decision) but 100% with respect to to the Beth affirmance (the Board's error is clear). Thus, even if applicant can win on the Beth issue, the claim will most likely stand rejected.

Applicant does not want to have to amend to overcome Beth.

Should applicant appeal to the CAFC, or file a continuation amending to overcome Aleph?

If he does not appeal, would there be a res judicata problem for the applicant with regards to Beth, seeing as there is a standing adverse decision at the BPAI with respect to the Beth issue?

Even if he does appeal, does the CAFC have the option of affirming the Board on the Aleph issue without even examining the Beth issue? (This would certainly put the applicant in a sticky situation--never being able to overcome a clearly faulty decision.)

_________________
Only after final does the fun begin.
Everybody else's advice disclaimers are herein incorporated by reference.


2012-08-15 13:04:47
Profile

Joined: 2012-01-30 01:41:51
Posts: 22
If the budget is unlimited, why not break the claims into two sets--
a) file a CAFC with cancelled Aleph claims, retaining the Beth ones, and
b) file a cont. cancelling the Beth claims, and having amended Aleph ones?


2012-08-16 00:27:42
Profile
Patent Practitioner

Joined: 2011-12-24 18:23:00
Posts: 104
To clarify, in the hypo, there is only one claim. It is rejected with two different rejections. To amend the claim to get around Aleph will likely only result in a rejection based on Beth--one that will not be appealable.

_________________
Only after final does the fun begin.
Everybody else's advice disclaimers are herein incorporated by reference.


2012-08-16 12:14:49
Profile

Joined: 2012-01-10 00:06:46
Posts: 21
Since there is only one claim and it is rejected on two grounds, there is no point in appealing to the CAFC if doing so will only result in the removal of one of the two grounds of rejection.

Assuming Aleph and Beth disclose different things, your best bet would be to reopen prosecution, amend around Aleph ONLY, and then see how things proceed. If the Examiner removes the rejection in view of Aleph but maintains the rejection on Beth (of the amended claim), appeal through the PTAB and ultimately to the CAFC (on Beth alone) might be more worthwhile.

Put another way, the CAFC (like the supreme court) will look for the easiest way to resolve a case. Even if, arguendo, your claims are patentable over Beth, the CAFC would likely still reject the claims under Aleph and dispose of the application in that manner. That would put you in the same position you are in now, i.e., faced with the decision of reopening prosecution to amend around Aleph or abandon the case.

Good luck.

Klav


2012-08-16 16:01:38
Profile
Patent Practitioner

Joined: 2011-12-24 18:23:00
Posts: 104
Well, we filed our notice of appeal today. In real life, there isn't just one claim. It'll be our third appeal in the last few years. Thanks for the good luck wish.

_________________
Only after final does the fun begin.
Everybody else's advice disclaimers are herein incorporated by reference.


2012-08-16 22:38:35
Profile

Joined: 2011-12-26 16:53:41
Posts: 117
Robert K S wrote:
Well, we filed our notice of appeal today. In real life, there isn't just one claim. It'll be our third appeal in the last few years. .


Appeal to the CAFC? Cool!

_________________
Karen Hazzah
Patent Prosecution blog "All Things Pros" http://allthingspros.blogspot.com/

The opinions expressed on this message board are mine and do not represent the views of my law firm, colleagues, or clients. My writings on this board are not legal advice and are offered for educational purposes only. No attorney-client relationship is created by my writings on this board.


2012-08-17 10:33:31
Profile WWW
Display posts from previous:  Sort by  
Reply to topic   [ 6 posts ] 

Related topics
 Topics   Author   Replies   Views   Last post 
There are no new unread posts for this topic. Appeal procedure

Ienzo

1

2497

2014-02-06 15:57:17

Robert K S View the latest post

There are no new unread posts for this topic. Appeal brief content as of 2012?

Robert K S

1

2579

2012-04-29 11:35:10

khazzah View the latest post

There are no new unread posts for this topic. Example of killer BPAI appeal brief?

coffeecup

9

9356

2015-01-22 13:01:47

khazzah View the latest post

There are no new unread posts for this topic. Timing to File Appeal Brief

marco

1

1874

2015-03-12 17:52:50

Robert K S View the latest post

There are no new unread posts for this topic. Help needed by pro se appeal brief writer – skilled in art

eastofwestern

0

1804

2014-07-04 00:23:22

eastofwestern View the latest post

 


Who is online

Users browsing this forum: No registered users and 1 guest


You cannot post new topics in this forum
You cannot reply to topics in this forum
You cannot edit your posts in this forum
You cannot delete your posts in this forum

Search for:
Jump to:  
cron