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 Example of killer BPAI appeal brief? 
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Joined: 2012-01-27 14:26:44
Posts: 12
Hello all!

I am helping out with preparation of an appeal brief and could use an excellent example to serve as a guide. Anybody read one recently (or written one!) that gave you the chills?

Justin


2012-06-24 09:09:24
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Joined: 2011-12-26 16:53:41
Posts: 117
coffeecup wrote:
Hello all!
I am helping out with preparation of an appeal brief and could use an excellent example to serve as a guide. Anybody read one recently (or written one!) that gave you the chills?
Justin


I read many Appeal Briefs every week in doing research for my blog, and I don't find many that I am absolutely bowled over by. Don't get me wrong ... I see plenty that are well written and legally sound ... just don't rise to the level of "give me the chills".

As far as writing style goes, I find that briefs in Reexam have a different style -- more persuasive, less dry -- than briefs in straight prosecution. I kinda like this style.

My advice: don't pin your hope on "an excellent Appeal Brief" in general. Zero in on the kind of arguments you're making and look for well-written arguments of that kind. The rest is boilerplate and won't win your case.

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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.


2012-07-03 12:21:35
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Joined: 2011-12-24 18:23:00
Posts: 104
I think Karen is spot-on, as usual. No brief on appeal to the BPAI is likely to be breathtaking. They're all going to suck essentially as a matter of course, because the types of issues and the number of issues that usually get appealed from suck: multiples of broadest reasonable interpretation issues, prima facie obviousness issues, 112(2) issues, all of which are likely to center around obtuseness. It must be a true art to combat obtuseness without that obtuseness reflecting in one's own words, and appeal briefs really aren't the forum for art...

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2012-07-03 13:44:28
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Robert K S wrote:
I think Karen is spot-on, as usual. No brief on appeal to the BPAI is likely to be breathtaking. They're all going to suck essentially as a matter of course, because the types of issues and the number of issues that usually get appealed from suck: multiples of broadest reasonable interpretation issues, prima facie obviousness issues, 112(2) issues, all of which are likely to center around obtuseness. It must be a true art to combat obtuseness without that obtuseness reflecting in one's own words, and appeal briefs really aren't the forum for art...

That is the challenge, isn't it? Giving a concrete response to an obtuse rejection.

I gotta think a brief that does just that will be persuasive to ALJs. That is, for rambling obtuse rejection vs well-reasoned and well-written argument, the argument is the clear winner. Now, it's a much closer call for rambling obtuse objection vs. rambling-obtuse-and-legally-irrelevant argument. The second scenario is (sadly) also very common, which is why a lot of Appellants lose. The rest lose because they are stuck with bad facts and a client who won't give up.

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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.


2012-07-13 14:33:16
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Joined: 2011-12-26 16:53:41
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coffeecup wrote:
I am helping out with preparation of an appeal brief and could use an excellent example to serve as a guide. Anybody read one recently (or written one!) that gave you the chills?


I dunno about "the chills", but I did recently come across two briefs that impressed me as well-written and thorough. I'll provide a link to the BPAI decisions, and you can look up the briefs on PAIR:
http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2011000853-07-06-2012-1
http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2010001288-05-29-2012-1

Note that one of these parties lost at the BPAI, perfectly illustrating that well-written and thorough won't always win the day. Still, these are admirable qualities worth emulating.

Personally, I didn't like the organization in the Bayne brief. It was thorough in that it responded to each and every point made by the Examiner -- and I give it points for that. But it lacked an overall cohesive argument. I feel like the Chao brief did a better of job of responding to Examiner's points while also weaving those points together into a cohesive whole.

Just one [wo]man's opinion.

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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.


2012-07-25 17:57:33
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Joined: 2012-01-27 14:26:44
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Thank you Karen, I will review your suggestions.


2012-10-25 10:07:49
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Joined: 2014-04-17 12:30:02
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Given des.uspto.gov links no longer work (at least not yesterday and today).

Couldn't find Chao. Any hint how to narrow a search for Chao to find it? A more specific number, title, anything?

Was able to find Bayne appeal brief in IFW of application 11/781,992.

Thank you for sharing good examples.


2014-04-17 12:57:19
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Joined: 2011-12-26 16:53:41
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>Given des.uspto.gov links no longer work (at least not yesterday and today).

You can readily convert between des.uspto.gov links and e-foai.uspto.gov links

Change the

http://des.uspto.gov/

portion of the hyperlink to

http://e-foia.uspto.gov

IOW, the portion of URL starting with "Foia" and ending with the appeal number and the filing date remains the same.

So ...

http://e-foia.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2011000853-07-06-2012-1
http://e-foia.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2010001288-05-29-2012-1

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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.


2014-06-11 16:39:09
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Joined: 2015-01-19 19:50:57
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I hope this is of some help. I have assisted folks in getting over 650 US patents and have filed several Appeal Briefs over the last several decades. For some time I have been doing Briefs that 1. never (NEVER) refer to the Examiner or mention the Examiner by name; and 2. Briefs which cite no (no) case law. For such a brief of mine that resulted in the reply being a Notice Of Allowance see the file - publicly available - in US Ser. No 13/317,155 (cellphones that emit breath spray etc and/or block lips of a speaker). You will note I am also the named applicant so there is no violation of privilege here. There are Examiners reading the Brief; these men and women are doing there jobs and doing them well-that is my experience for over 30 years; and there is no reason to personally impugn an Examiner- implicitly or explicitly. They have always been courteous to me and I have tried to work with them in the same way. You and the Examiner are a team working to see to it that patentable inventions are patented. Regarding case law, unless an Examiner has misstated a case or misinterpreted it, there is not reason to cite case law - everyone involved knows the case law. You can paraphrase a holding or useful dicta in your own words-everyone will know the source. This is just one approach and I hope it provides some useful comment. Guy McClung, San Antonio


2015-01-19 20:07:45
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> there is no reason to personally impugn an Examiner- implicitly or explicitly.

Agreed that it's counterproductive. The "reason" is usually frustration, and the vast majority of practitioners get frustrated from time to time when dealing with Examiners. And they with us. The trick is not letting the frustration show, or at least to the extent that it damages your cause.

I've reviewed many hundreds of appeal briefs and responses (in researching for my blog), and I've seen only a handful of personal attacks. So I think as a whole we practitioners are doing a great job of keeping our frustrations in check.

>[I recommend] never (NEVER) refer to the Examiner or mention the Examiner by name;

Agree with not calling the Examiner out by name. However, I see no problem at all with referring to "the Examiner" in a paper filed with the PTO. After all, it *is* the Examiner who took the position that you're arguing with. There's no way around that.

To me, the slight distancing of "the Examiner" rather than "Examiner John Doe" is distance enough to sidestep any implication that you're addressing the Examiner as a person rather than a job he does. You don't need to distance further by avoiding "the Examiner" -- plus the alternatives ("the Office", "the PTO") sound ridiculously stilted and high-falutin. In fact, that sort of tone can do more damage.

>Regarding case law, unless an Examiner has misstated a case or misinterpreted it, there is not reason to cite case law - everyone involved knows the case law.

"Knows" that it exists, sure. "Knows" how to apply it? Hardly. Most folks just paste in a cite from the MPEP or from a patent law treatise and move on. And it's not just Examiners that do this. I see evidence every day (in reviewing appeal briefs for my blog) that not all practitioners really understand even the most fundamental of patent case law.

I agree that merely pasting in the holding from KSR doesn't help anyone -- not the Examiner, not the Applicant, not the Board of Appeals. What does help is explaining *how* the Examiner's reasoning wasn't articulated and/or rational. Adding this extra bit of detail sometimes results in additional explanation from the Examiner -- a win for the Applicant. And if not, this extra detail will certainly go a lot farther to persuading the Board than will a naked recitation of the magic words from KSR.

>You can paraphrase a holding or useful dicta in your own words-everyone will know the source.

Why paraphrase? Because case law is something to be avoided? As I said above, I disagree that you should avoid case law .

Attorneys are taught to be very careful when using case law, and a careful paraphrase is fine. However, I typically use a paraphrase from another court decision instead of doing it myself.

_________________
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.


2015-01-22 13:01:47
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