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 Appeal procedure 
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Joined: 2014-02-03 17:09:35
Posts: 1

My main Claim was rejected under 103 and when amending it, I added information (advantages over prior art) which was considered by the Examiner as 'new matter.' The Examiner again rejected the Claim under 103 with the same arguments, ignoring the advantages I provided.

I filled Notice of Appeal with Pre-brief conference in regard to “new matter” issue. The decision of the conference was in my favor in regard to the ‘new matter’ rejection.

In an email message to me after the conference, the Examiner stated that the ‘new matter’ issue was withdrawn by the conference, however, in the next paragraph, he stated that the 103 obviousness rejection remains.

Nowhere in the previous OA or later my arguments, that were considered ‘new matter’, were discussed or refuted.
My understanding was that now, after ‘new matter’ issue was withdrawn by the conference, the Examiner must reopen prosecution and consider the arguments that were previously rejected as new matter.

The Examiner, in his email message, offered me to amend the Claim in the sense that I accept 103 obviousness rejection, add another element to the claim and that he will then allow the application.

As already mentioned, my understanding was that the Examiner reopened prosecution, so I told him in my answer to now consider the arguments that were previously rejected as ‘new matter’.

The Examiner seemed offended and his answer to that message was abrupt, saying that the pre-appeals conference decision for my case was to proceed to the Board and it is already forwarded to the board, and that there will be no more communication via email.

My question is, can the Examiner in this phase forward the appeal to the board without any further communication with me? Forwarding the appeal means additional costs, I am not sure I am prepared to go so far.

In another post I found the appeal procedure explained by “Gerd” (second post - where he says:

File a Notice of Appeal: $800 (or less if small or micro entity)
You can fila a PABR along with the Notice of Appeal without having to pay a fee.

If you have to file an Appeal Brief this also goes without any fee.
Then the Examiner reads your Brief and he may reopen prosecution without the Brief having to be forwarded to the Board.

If he does not reopen prosecution, he writes an answer regarding your Appeal Brief.

You may then withdraw the application from the appel procedure by abandoning it or by filing an RCE together with an amendment (assumed the examiners arguments for rejection are now persuasive to you)… etc.

I am interested what are are my options at this point. Any help to clear up the situation would be very appreciated.

2014-02-03 17:38:28
Patent Practitioner

Joined: 2011-12-24 18:23:00
Posts: 104
It sounds like you're a patent applicant representing yourself pro se. The best advice would be for you to get a patent attorney or (probably less expensively) a patent agent.

I'm not your attorney or agent, so I can't offer you advice for your particular case.

But I think I can say that, in general, an examiner has no obligation to converse, negotiate, or explain, via e-mail or otherwise, after a final rejection. When the examiner maintains his rejection, it's time to take the case to the next step, and appeal.

Sadly, one or more obligatory appeals are becoming the rule rather than the exception when dealing with the Patent Office. Of course, any applicant would be well-advised to make sure that his or her grounds for appeal are sound, before expending the money and time to appeal. That's where the experience of a licensed practitioner comes in handy.

The current USPTO fee schedule shows that a notice of appeal is $800 for a large entity, $400 for a small entity, and $200 for a micro entity, and the fee to forward the appeal on to the Board is $2000/$1000/$500. These fees need only be paid once (per appeal).

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

2014-02-06 15:57:17
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