Pendency of BPAI Appeals

PatentLawPic876The BPAI reports that their average pendency of ex parte appeals decided in the 1st Quarter of FY2010 (Oct-Dec 2009) jumped to 9.9 months from 7.7 months for the prior three month period. [Link] BPAI Chief Judge Michael Fleming recently reported that the average pendency is likely to rise significantly in the coming year because of the large and growing backlog of cases on appeal.

The BPAI has done an increasingly good job of providing information directly to the public. However, this pendency data is highly misleading for a patent applicant considering the question of whether to appeal.  In particular, the BPAI figures are measured from the “appeal number assignment dates” which occur at some point after briefing is complete and therefore do not include time associated with briefing.

To provide a bit more details regarding pendency, I created a dataset of 2770 ex parte BPAI decisions decided in the past two-years (2008–2009) and their assocated file wrappers.  Using this dataset, I looked at appeal pendency as calculated from the filing of a notice appeal to the BPAI decision date. A summary of the results follow.

Results:

  • Median appeal pendency: 23.9 months (Notice of Appeal to BPAI Decision Date).
  • Median pendency of application at time of BPAI decision: 67 months (Application Filing Date to BPAI Decision Date).  I.e., the median case where an appeal has been decided had been pending for 5 1/2 years before the
  • Median pendency of application family at time of BPAI decision: 79 months (Earliest Priority Date to BPAI Decision Date).
  • Defective Briefs: 40% of the decided cases included at least one applicant brief that was rejected as defective.
  • There are three charts below: The first shows the Cumulative Frequency of Ex Parte Appeal Pendency.  This first chart is useful in considering the odds that a particular appeal would take fewer than X-months. The second chart shows the median pendency grouped by technology center. The third chart shows the percent of decided appeals that include at least one notice of a defective appeal brief for each technology center. 
  • Looking Forward: As implied by the first paragraph of this report, these figures likely understate the expected pendency for any recently filed appeal.

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Notes:

  • This report did not consider (1) remands without opinion; (2) decisions that were not published on the BPAI website; or (3) the fact that most notices of appeal filed by applicants do not actually result in a complete appeal process (because the examiner withdraws the rejection or the applicant decides to abandon the application or file an RCE).
  • See also: https://patentlyo.com/patent/2007/09/how-long-does-a.html (2007).

 

64 thoughts on “Pendency of BPAI Appeals

  1. 64

    Huh said, “Because the combination of A and B does not magically result in Y, but the combination of C and B does magically result in Y.”

    Sounds like Frosted Lucky Rejections, They’re Magically Delicious!

  2. 63

    And you all thought the examiner was in a tiff about being called out over his treatment of a period….?

    Check out the post from Logan at 2010-01-23 06:20 pm as to what an examiner can get away with:
    link to just-n-examiner.livejournal.com

    Dennis, a new research project beckons: what would the error rate be if these lax standards were actually tightened up?

  3. 62

    “http://just-n-examiner.livejournal.com/41693.html

    Posted by: Noise above Law | Jan 22, 2010 at 10:53 AM ”

    Shall I take that as an admission that you are the attorney in question?

    Oh, and stop bsing, you don’t love the law. Even if you do it is a one-sided abusive kind of “love”.

  4. 61

    Apology accepted. Please accept mine in return.

    I am passionate about the Law and blogging carries with it the capability of noncivility in undue proportions.

    I do struggle with the degree of ad hominem that I post with. I continue to post notwithstanding, as I view the forum itself as requiring a certian level of directness. The forum does not recognize politeness. Clear logic and reason needs to be buttressed with the passion of zings.

    Especially here.

    It is a bit sad that this is the number one read patent blog, but at the same time, because it IS the number one read patent blog, certain views must be confronted. I post in different styles on other blogs under different brand names, but the style I post here under the moniker Noise is done with a reason – and that reason is a passionate defense of the Law I Love.

  5. 60

    Noise, I’d like to apologize for my sarcasm in the previous posts. I know you mean well, even if I personally have some difficulties with your presentation style.

    You can have the last word – I’m going to retire from posting for a while. The ugliness exhibited by some on this board has made me behave in ways that I’m not particularly proud of. Carry on.

  6. 59

    “And KSR has had no impact in the patent world – right BigGuy?”

    I thought you were the tireless opponent of distortion and “strawmen”.

    My recollection is that I actually said “I have seen no evidence that KSR has had any real impact on how rejections are generated” and that “I’m still not convinced that KSR has had any meaningful impact on the obviousness determinations at the patent office.” I later clarified my statements with “I’ve absolutely seen rejections that attempt to apply KSR, e.g., with ridiculous “obvious to try” rationales. What I did mean to say is that these post-KSR rejections aren’t any more likely to stick than the old ones.”

    But thanks once again for your “honest perspective.”

  7. 58

    …as I said – the entertainemnt value.

    Once again BigGuy mistakes the fact that since something hasn’t hanppened to him that it could not have happened to anyone.

    And KSR has had no impact in the patent world – right BigGuy?

    Wow, your ego is bigger than mine.

  8. 57

    “Without me (and others like me), the crap that passes as legal logic put forth by the persistent shield crowd might be misunderstood as actual law.”

    Let me be the first to thank you (and others like you) for your tireless public service. Without you (and others like you), I (and others like me) might mistake crap for “the Law,” being the ignorant rube that I am (and others like me are).

  9. 56

    Jules,

    Go back and re-read the post. It is not merely a “minor lapse of judgement”. The depth of this problem obviously escapes you. We are talking about major problems in this examiner’s reasoning and retributive attitude.

    The fact that this examiner can either sign off on his own or has a boss that sign’s off on such measily crap in only one facet of the problem. Abuse of power in purposely being vindictive is not a mere “minor lapse of judgement”.

    As to the Trainwreck – I am not a part of the problem. I am part of the entertainment! Without me (and others like me), the crap that passes as legal logic put forth by the persistent shield crowd might be misunderstood as actual law.

    I do not post merely to defend a position based on popularity. I post in defense of actual positions I hold. Perhaps you should not skip my posts so that you actually learn something and decide to take a stand and defend a position rather than merely having an opinion and pulling for the less popular side. Your opinion may then have some substance and be worth considering. Honestly, honest perspective without backing is worthless.

  10. 55

    It is time to hire more BPAI judges. Otherwise an appeal is often not a practical alternative, due to the long delay and the often short product life. (On the other hand, with RCE’s being put on the bottom of the stack, RCE’s are often now not a practical alternative.)

    How about a chart of the number of judges each year for the past ten years and the number of applications filed each year for the past ten years?

    Many applicants are individuals or small businesses who cannot get funding to commercialize their inventive products until the patent issues.

  11. 54

    “Are you saying that you do so for mere enjoyment, and in disregard for whether the position is correct or not?”

    No. I’m saying I enjoy a respectable debate where each side has compelling arguments. In this case the rationale, “If the underlining or strikethrough is in any way wrong, then it casts doubt into the entire amendment” I find compelling for the examiner. At least compelling enough that the attorney didn’t have to go way over the examiner’s head and contact the Director.
    The Director has bigger fish to fry.

    However, BG’s arguments are also compelling. I think the examiner should get customer service deductions, a non-critical element of their appraisal, which would be discussed with the examiner. A simple discussion with the examiner and their SPE should suffice to resolve the problem, one examiner at a time. The SPE should be watching for crap like that. However, contacting the Director is overkill, in my opinion.

    There usually is no right or wrong in these situations, and me defending the less popular opinion has nothing to do with doing what is correct or incorrect. Instead, I was merely presenting an alternate opinion, so that this examiner doesn’t end up being lynched at the hands of an irrational mob for having a minor lapse of judgement. The examiner who was not actually involved in that case but made a similar mistake, and responded exremely harshly should be penalized moreso than the actual examiner. Although, I’m afraid that may never happen because journalistic integrity may include maintaining the anonymity of a source if so desired.

    Finally, speaking of Trainwrecks, just admit to yourself that you are just as much, if not more, of a problem than the most abusive people here. I admit my motives are selfish, as it does get old having to skip your crusades of comments, but I am also trying to by helpful by offering my honest perspective to you.

  12. 53

    “…I do enjoy defending the opinion of lesser popularity from time to time.”

    Are you saying that you do so for mere enjoyment, and in disregard for whether the position is correct or not?

    Let the Trainwreck roll on…

  13. 52

    “…I do enjoy defending the opinion of lesser popularity from time to time.”

    Fair enough. Me too – sometimes I even get paid to do that.

  14. 51

    Are you talking about having Office Actions kicked back, or Amendments/responses kicked back?

    I admit, your examiner-speak is confusing me.

  15. 50

    And some serial numbers too.

    What is there to see, Sockie? There *was* a space introduced into the claims and it was not intentional. There is no question of whether the space was introduced or not. Nobody on either side disputed that.

    The only question is whether the introduction of an additional space between two words in the course of making an amendment is something that should matter to the PTO. What do you think?

    Before you answer, you should appreciate the fact that the PTO does not care about the introduction of such spaces in 99% of the instances where it occurs.

  16. 48

    “I know several attorneys who have had office actions kicked back for “improperly” introducing introducing an additional *space* between two words.”

    Names, please.

    Thank you.

  17. 47

    BigGuy: The fact that the underlining was “incorrectly” extended to the period at the end of the claim does not suggest that there are any more “hidden” errors than you would expect in any other amendment, except for perhaps more incorrectly underlined periods.

    I know several attorneys who have had office actions kicked back for “improperly” introducing introducing an additional *space* between two words.

    Jules: The rules require that changes in a claim be indicated, and specifies a particular means for doing so.

    Actually the rules aren’t that particular.

  18. 46

    BG, I respect your opinion. In fact, if I were the examiner, I would not send such a notice of non-compliance unless there was something beyond a misunderlined period, such as a misunderlined word. But as I’m sure many can sympathize, I do enjoy defending the opinion of lesser popularity from time to time.

  19. 45

    Jules, your comments are usually quite reasonable, but I think defending the original notice of noncompliance is beyond the pale. The fact that the underlining was “incorrectly” extended to the period at the end of the claim does not suggest that there are any more “hidden” errors than you would expect in any other amendment, except for perhaps more incorrectly underlined periods. It suggests only that the attorney “incorrectly” underlined a period, and might possibly suggest that other periods were incorrectly underlined, but so what?

    The rules require that changes in a claim be indicated, and specifies a particular means for doing so. The rules don’t justify this examiner’s pretense, for the admitted purpose of manipulating the bonus system, that the submitted amendments in this case didn’t clearly indicate the changes that had been made.

  20. 44

    “Actually it shows that 40% of attorneys can’t even figure out how to prepare a simple document.”

    That’s why it would be useful to know if the defective brief rate is around 40% for appeal briefs filed in other tribunals (e.g. CAFC, SCOTUS). If the DB rate for an appeal brief is only 2% at the CAFC but 40% at the BPAI, that might suggest something wrong with the CAFC rules, i.e. they are not complex enough to achieve high DB rates.

  21. 43

    Noise, I apologize because I may have read too much into your comment. It actually is quite fair, and you do not generalize one bad apple to everyone. I guess my view was tainted by all the other crap you’ve been posting lately.

  22. 42

    Noise, regarding that story…

    There was one comment that seems to effectively justify the nitpicky behavior of the examiner: “If the underlining or strikethrough is in any way wrong, then it casts doubt into the entire amendment. Examiners don’t have time to look for hidden typos (by hidden I mean incorrectly misunderlined). [] … it is the examiner’s job to scrutinize even that for the possible addition of new matter.” How can the examiner do that if the amendments are not clearly marked?

    To point to the bad attitude of one examiner, generalize that to the entire USPTO, and effectively ignore the attorney’s complaint [regarding correction of his/her own mistake, mind you] to the Director, really lets your true colors shine through. While the examiners response to Greg was off the wall, the attorney’s action was off the wall as well. I score this match 0-0, losers all around.

  23. 41

    This is not to say that Attorney’s don’t or can’t make simple mistakes. That does happen.

    MaxDrei, for your particular understanding (I cannot call this fun), I am providing a link of an actual USPTO examiner who opines on such a simple Attorney error.

    Note however, that the focus of the article is not on the error per se, but on the unprofessional response of a different USPTO examiner.

    This is the reality of US prosecution.

    This is why you must temper your professional-style dealings with EP examiners when you are in the US arena.

    To head off Malcolm’s comment – bad examination is NOT the other side of the coin of bad applications – try to understand why this article should incite umbrage at certain Office personal.

    link to just-n-examiner.livejournal.com

  24. 40

    6, er um, whatsamaddawitchu,

    Attorney processing is not the same as cut-paste form paragraphs. Your understanding (or lack thereof) hinging on “simple” is simply wrong.

    How do you stand it?

  25. 38

    Actually it shows that 40% of attorneys can’t even figure out how to prepare a simple document.

  26. 36

    “The defective appeal brief notices are prepared at a very low level by people who make a lot of mistakes. They often flag things as missing which aren’t, and can then usually be convinced over the phone to withdraw the notice. I imagine those cases are still part of the 40% statistic, and of course they still cause a delay.”

    You can get them on the phone? The ones I’ve called NEVER answer their phones and NEVER call me back when I leave voicemails.

  27. 35

    A 40% defective brief rate should signal that the rules are too complicated and that the Board’s staff of brief screeners is far too punctilious in enforcing them. Such a high bounce-back rate would suggest to the public that the PTO is simply engaging in passive-aggressive behavior, just waiting for the 20-year clock to run down and hoping the case will go away on its own.

    It would be interesting to know if any other administrative or judicial tribunal had a brief bounce-back rate approaching 40%.

  28. 34

    The defective appeal brief notices are prepared at a very low level by people who make a lot of mistakes. They often flag things as missing which aren’t, and can then usually be convinced over the phone to withdraw the notice. I imagine those cases are still part of the 40% statistic, and of course they still cause a delay.

    Another common problem is that they not only insist that appendices that say nothing must be present, but also insist that they contain at least a whole sentence saying nothing, and are not satisfied when they consist of the title plus the word ‘none’.

  29. 33

    “Awww, poor junior examiner hasn’t fiqurd out wat all dos big FP’s r for just yet, how cuuute.”

    Can someone translate this nonsense for me?

    “AnotherJunior no spe of mine teaches these classes, you’ll need to contact and pay me directly.”

    6, it is very obvious that your SPE hasn’t taught you anything. It’s equally obvious that basic logic skills evade you.

    I’d love to take you’re “How to Write Horribly Illogical Rejections” 201 course. Let me know when/where on campus you’ll be teaching this course and I’ll be there.

  30. 32

    “Awww, poor junior examiner hasn’t fiqurd out wat all dos big FP’s r for just yet, how cuuute.”

    Can someone translate this nonsense for me?

    “AnotherJunior no spe of mine teaches these classes, you’ll need to contact and pay me directly.”

    6, it is very obvious that your SPE hasn’t taught you anything. It’s equally obvious that basic logic skills evade you.

    I’d love to take you’re “How to Write Horribly Illogical Rejections” 201 course. Let me know when/where on campus you’ll be teaching this course and I’ll be there.

  31. 31

    Bad Joke, perhaps you should try to talk AnotherJunior into joining the class. He seems excited and is already asking for contact information.

    AnotherJunior no spe of mine teaches these classes, you’ll need to contact and pay me directly.

  32. 30

    Regarding the defective appeal briefs, the common thread is that in all of the examples cited above, if someone in a reviewing capacity at the PTO had simply picked up the phone and called the attorney and said please resubmit this brief and address the particular trivial informality then in most instances the correction could be made in a matter of days, if not minutes, and the process advanced. Instead, the correction is made and the brief goes back into the pile, not to be reconsidered again for another 3-4 months, maybe. But no one ever calls because the system is set up to foster delay. I’ve asked, why couldn’t you just call? I would have noted claim X was cancelled. The answer, “I can’t do that.”

  33. 29

    “There’s nothing you can teach me.”

    Your being unteachable is not something that I can fix. But I’m actually very good at teaching and I think there probably are things I can teach you. In fact, I know there is at least one thing I can explain to you, even if you don’t end up comprehending the explanation. Specifically that is the answer to your question.

    A 200$ deposit should assure you a space in this year’s class sir.

    “After I typed this response I noticed IANAE further explained things.”

    I didn’t see anything in IANAE’s post that explains how combining two reference which both lack a claimed feature results in a combination that does include the claimed feature.

    Can you elaborate on that?”

    Yes, he didn’t explain the answer to your question, he further explained things to Red about appeals. I thank him for not explaining the answer to your question since that would put a dent in my business model.

    My business model includes, inter alia, identifiying attorneys or agents who don’t have a very good grasp on various issues in patent law, tempting them with the possibility of having their ignorance cured by making one or more statements, ignoring their bluster about the one or more statements not making any sense, charging a fee, and curing their ignorance.

    I also indirectly own several business method patents that cover that process and similar processes in conjunction with a general purpose computer or the internet so don’t even get any ideas about moving in on my territory. Bub.

    Lol.

    Also, you should be aware that one of my indirectly owned patents covers a method comprising:

    providing an agent or attorney operating a particularly programmed general purpose computer,
    posting a comment on a patent blog indicative of the agent or attorney’s ignorance by utilizing the particularly programmed general purpose computer, and
    addressing 6 either in a separate step or in the posting step.

    You should recieve a letter from my representatives shortly. If you would like to license this technology it is available at affordable prices ranging anywhere from 100,000$ per year to only a few million.

    LOL

    “Where is 6’s contact information on this board? Has anyone contacted his SPE? 6 doesn’t really believe the shi…stuff he’s posting right?”

    Awww, poor junior examiner hasn’t fiqurd out wat all dos big FP’s r for just yet, how cuuute.

    “CANNOT BE OBVIOUS SINCE THE ELEMENTS THEMSELVES WERE NOT EVEN KNOWN”

    200$ deposit good sir. If you can get a few more of your friends onboard we can get this class in session before month’s end.

  34. 28

    Where is 6’s contact information on this board? Has anyone contacted his SPE? 6 doesn’t really believe the shi…stuff he’s posting right?

  35. 27

    You see, this right here is your issue PTO:

    “That depends on what reference A and C show and how well they fit together with what is taught in B.

    You also seem to be assuming that the spe or primary is only concerned about your argument regarding the presence of a feature. They’re not. They’re concerned, more than anything I’ve found lately, with whether or not the references, and specifically the features within, fit together very well.”

    You’re not teaching the law properly. The motivation for combining unknown elements CANNOT BE OBVIOUS SINCE THE ELEMENTS THEMSELVES WERE NOT EVEN KNOWN. But I digress. I’ll just appeal. Oh wait, I think this could be the source of the appeals issue.

  36. 26

    Truly dumb, I got one of those for missing a specification reference in the claims summary on an element that had been referenced to the specification 4 times in the immediately preceding claims and 1 time afterwards.

    Apparently, the BPAI can’t infer that support and explanation of the same element would continue to be found in the same place.

  37. 25

    “I can teach you patent law 201 for 1000$, I’ll take a 200$ deposit immediately. You can find my contact info on this board.”

    There’s nothing you can teach me.

    “After I typed this response I noticed IANAE further explained things.”

    I didn’t see anything in IANAE’s post that explains how combining two reference which both lack a claimed feature results in a combination that does include the claimed feature.

    Can you elaborate on that?

  38. 24

    “They have to make sure that the case is in condition for appeal before letting it go to appeal. Otherwise, they can lose on something that wasn’t even in your arguments, and then they’re stuck in a situation where it is more difficult to re-open. (not to mention they contribute badly to our appeals stats) Technically they should do this at time of final, but alas, the system simply isn’t set up with that in mind.”

    The system isn’t set up to get the rejection right in two tries? Can you elaborate on that?

  39. 23

    “@6, so how does replacing reference A, which the office action admits doesn’t show Y, with reference C, which the office action admits doesn’t show Y, make things any better?”

    That depends on what reference A and C show and how well they fit together with what is taught in B.

    You also seem to be assuming that the spe or primary is only concerned about your argument regarding the presence of a feature. They’re not. They’re concerned, more than anything I’ve found lately, with whether or not the references, and specifically the features within, fit together very well.

    Now, to be sure Red, my boss likes us to go ahead and address people’s technical or teaching based arguments even if we send a new grounds of rejection if the topic would still be likely to come up. It would have been nice if that examiner did that as well.

    “And as to your last point, I argued none of A, B, or their combination teaches Y.”

    Then you should have said that in your first post.

    “Apparently I was right, since they reopened prosectution. ”

    That’s a pretty big assumption. An assumption that, if you were one of my current “clients”, you’d be more likely to be mistaken about than to be correct about. Bad arguments get the case to the Spe’s eyes just as much as good arguments do.

    That said, good arguments are always nice to see. It makes us have a better opinion of you.

    “My only point is that if they think that reference B shows Y, then they should let the case go to the board. ”

    I know what your point was but I don’t necessarily agree. And I doubt you would agree if you take a step back and understand the situation. You have to understand that the situation is more complex than your little argument. They have to make sure that the case is in condition for appeal before letting it go to appeal. Otherwise, they can lose on something that wasn’t even in your arguments, and then they’re stuck in a situation where it is more difficult to re-open. (not to mention they contribute badly to our appeals stats) Technically they should do this at time of final, but alas, the system simply isn’t set up with that in mind.

    “And apparently inserting C, which the office admits does not teach Y, somehow makes things better.”

    In a sense, but in another sense you’re drawing a premature conclusion. In one sense sure the new combination might fit together better and better portray the issue for appeal. In another sense though, they don’t necessarily think switching out A for C will make Y be shown any more or less. That is simply not necessarily true.

    “And that happens how? By magic?”

    I can teach you patent law 201 for 1000$, I’ll take a 200$ deposit immediately. You can find my contact info on this board.

    After I typed this response I noticed IANAE further explained things.

  40. 22

    “so how does replacing reference A, which the office action admits doesn’t show Y, with reference C, which the office action admits doesn’t show Y, make things any better?”

    Because the combination of A and B does not magically result in Y, but the combination of C and B does magically result in Y.

    Get it?

  41. 21

    Red Dog: My only point is that if they think that reference B shows Y, then they should let the case go to the board.

    No, if they think the rejection is bad for any reason they should send it back to the examiner to come up with a proper rejection. If they don’t like the combination of A and B, why waste the Board’s time?

    It’s not clear exactly what the real problem is, but chances are it’s a combination of one or more of the following:

    1. Pre-appeal stopped reading as soon as they found one problem with the rejection, and didn’t bother considering the rest of your argument or explaining to the examiner that in addition to finding a new combination he should find new art for Y. Same thing happens a lot with defective briefs/petitions – they bounce it with instructions to correct the first defect they see, and your next submission is bounced for a different defect that was present in the original filing.

    2. The examiner has failed to either properly understand B, or properly communicate to you exactly how/where B teaches Y.

    3. You have failed to either properly understand B, or properly communicate to the examiner how/why B does not teach Y.

    4. You and the examiner disagree on what Y means, in which case your appeal was doomed anyway.

  42. 20

    @6, so how does replacing reference A, which the office action admits doesn’t show Y, with reference C, which the office action admits doesn’t show Y, make things any better?

    My only point is that if they think that reference B shows Y, then they should let the case go to the board. Instead, they just took the case out of the appeal queue and moved prosecution forward exactly 0.

    And as to your last point, I argued none of A, B, or their combination teaches Y. Apparently I was right, since they reopened prosectution. And apparently inserting C, which the office admits does not teach Y, somehow makes things better.

  43. 19

    trained chimp or baboon, either way, its not a pretty sight and the smell’ll getcha before you can even get close enough to confirm that the briefs are indeed defective…

  44. 18

    “Attorney argues that neither reference shows this (usually complicated) feature that of course neither reference shows by itself. However, the combination usually does (in my actions at least) show that feature.”

    So neither reference shows the feature, but when you combine them, the combination has the feature?

    And that happens how? By magic?

    “Happens all the time.”

    Yes. Many things happen all the time in Examinerland.

    “The real kicker about this type of argument is that even if the combination, or either reference alone, doesn’t show the feature that it is argued neither reference shows the argument itself is still spurious.”

    In Examinerland, that actually makes sense. However, out here, it’s jibberish.

  45. 17

    “BTW 6, how can you tell if my argument is spurious from that? :)”

    Because of the way you worded it. I see it from time to time where it is worded nearly exactly the same.

    Attorney argues that neither reference shows this (usually complicated) feature that of course neither reference shows by itself. However, the combination usually does (in my actions at least) show that feature.

    Happens all the time. The real kicker about this type of argument is that even if the combination, or either reference alone, doesn’t show the feature that it is argued neither reference shows the argument itself is still spurious.

    I blame the fact that it is used so often on faulty form paragraphs that some firms use.

  46. 16

    “RedDog, that’s interesting. What’s the application number?”

    He’s more trained chimp than baboon.

  47. 15

    Malcom,
    Maybe I wasn’t clear. The examiner cited B as disclosing Y in rejecting claim 1. We argued on pre-appeal that B does not disclose Y. They withdrew the final rejection and issued a new non-final with a new ground of rejection that still cites B as disclosing Y with a new ancillary reference that the office admits does not teach Y. Thus, the office avoided the issue of whether B discloses Y by citing a new reference that they admit doesn’t disclose Y.
    If this is too complicated to understand without me giving the app. number, please disregard.
    Thanks

  48. 14

    we had a case tied up at the board (a lot of the time was limbo at the examination section between being at the board) for almost four years. the problem was so simple:

    1) the examiner had forgotten to explicitly mention a claim number in his/her rejection of a claim on appeal. [the brief assumed the examiner meant to reject this claim and argued patentability in view of the references cited in the rejection – in order to address the deficiency]

    2) the administration at the board required the appendix show status identifiers like in an amendment [which is NOT a requirement under any rule!]

    in another one, a brief was sent back as defective for the sole reason of not mentioning that a claim was canceled. the notice of defective brief mentioned that the status of the claims section did not mention the status of canceled claim ___. this set us back many months. unfrikinbelievable.

  49. 13

    Last week I received a notice of defective appeal brief because my “status of claims” section said “Claims 1-10 are pending. Appellant appeals the rejections of claims 1-10.” Apparently the PTO was concerned that the panel would be unable to figure out that this meant that claims 1-10 had been rejected.

    It’s pretty clear what’s defective in that situation.

  50. 12

    Mr. Moonie, please provide me your email and I will send along the information you seek.

  51. 11

    10/190,039 is one example. Except its appeal chain went to the Federal Circuit before the PTO reopened prosecution.

    How is that an example of what RedDog alleges?

    Sorry, Malcom. Would love to post it, but would probably lose my head for that.

    Why not just disclose reference B and the issue regarding its disclosure of Y? Then you’ll receive some oxygen that will help you determine whether you have a reasonable chance of succeeding.

  52. 10

    Mooney:

    10/190,039 is one example. Except its appeal chain went to the Federal Circuit before the PTO reopened prosecution.

  53. 9

    I’d agree with you 6 if I had argued that the combination of the references was bad, but I didn’t. I argued the non-appearance of Y in either reference. So we’re right back where we were before the appeal was filed (B does or doesn’t disclose Y).

    Sorry, Malcom. Would love to post it, but would probably lose my head for that.

    BTW 6, how can you tell if my argument is spurious from that? :)

  54. 8

    “I also find the number of defective briefs rather amusing.”

    I’m not surprised. Last week I received a notice of defective appeal brief because my “status of claims” section said “Claims 1-10 are pending. Appellant appeals the rejections of claims 1-10.” Apparently the PTO was concerned that the panel would be unable to figure out that this meant that claims 1-10 had been rejected.

    Would you like the application number, Malcolm?

  55. 7

    Reddog that happens because spe’s don’t review 103’s to the point of deciding for themselves if it was a truly obvious combination before the case goes out. Don’t really have time for it I doubt. Pre-appeal comes in, spe decides that it simply isn’t that great of a combination regardless of whether or not B shows Y. Especially where A+B probably does show X.

    Good that you know how to spuriously argue though ;)

    I also find the number of defective briefs rather amusing.

  56. 5

    Here’s a fun one:
    Claim 1: X + Y
    Final OA:
    Claim 1 is rejected based on A in view of B.
    A shows X but does not disclose Y.
    B discloses Y.

    Pre-Appeal:
    Applicant agrees that A does not disclose Y.
    B does not disclose Y either.

    Prosecution Reopened, Non-Final OA:
    C shows X but does not disclose Y.
    B discloses Y.

  57. 4

    Wow – keep in mind the 23.9 month NoA-to-Decision time is based on OLD data (2008-2009). Going forward, this number will only increase (at a current rate of 2.2 months/quarter). Based on that (and assuming BPAI production remains steady), I’m guessing the average appeal instituted today would actually be decided in 30+ months.

  58. 3

    I can live with the length of appeals. My main complaint is the cycle of 1) receive bad rejection, 2) prepare and file appeal brief, 3) have application bounced back to the Examiner before reaching the Board so the Examiner can institute a new ground of rejection which is minimally better than the previous bad rejection. Rinse, repeat.

  59. 1

    I heard that it was Mooney who either had defective briefs, or the content of his briefs was ruled defective.

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