to file the amendment via that is called A REQUEST FOR CONTINUED EXAMINATION ( RCE ) . This route is explained in following excerpts by Boger, ESQ . By the way of all those cases that examined 34 percent of the cases examiner final rejection are reversed and 14 percent affirmed -in- part .Again this is my own personal view and we should wait and see how EDIG legal representative will approach.

The patent process can be a long and, at times, tedious process.

Many inventors assume that once you file your application

with the United States Patent and Trademark Office (USPTO),

the hard work is done. Unfortunately, for most cases, the

hard work has just begun. It is highly unusual for a patent

application to not be rejected and receive at least one Office

Action from the patent examiner. Typically, inventors will

receive multiple Office Actions in which their invention is

rejected for any number of reasons, including lack of novelty,

obviousness and ineligible subject matter. When an inventor

receives a Final Office Action, he has now come to a critical

crossroads in the prosecution highway. The inventor may

choose from three options: (1) abandon the application, (2) file

a Request for Continued Examination and pay a fee or (3) file

a Notice of Appeal.

Abandonment means exactly that. The inventor will

either not file a response within the required time period, or

will file a response with the USPTO stating that the application

is being abandoned. Some patent practitioners actually use

the abandonment route as a tactical tool. For instance, an

application has been rejected numerous times for dubious

reasons and the communication between the examiner and

patent practitioner appears to have reached a dead-end. The

patent practitioner may file a continuation application with

the USPTO and then abandon the parent application for

which there is the outstanding Final Office Action. The patent

practitioner typically uses this strategy in an attempt to get a

different examiner assigned to the review of the now newlyfiled

continuation application. Of course, if the previous

examiner gets assigned to the continuation application, then

this strategy has failed.

The second option for the inventor is to file what is called a

Request for Continued Examination or RCE. If an inventor files

an RCE with the required fee and a submission (a submission

may be an Information Disclosure Form, an amendment to the

Within two months of filing the notice and paying the

fee, the inventor must file his Appeal Brief with the BPAI. The

USPTO has set out numerous requirements regarding content

and arrangement of the Appeal Brief. Non-compliance with

these standards results in the brief being rejected and returned

to the inventor for revision. The contents of the Brief must

include: (1) a statement of the real party of interest (used as

conflict check for the judges); (2) a statement of related cases

(any continuation applications must be identified); (3) a

statement of the source or basis of jurisdiction of the BPAI;

(4) Table of Contents; (5) a statement of the status of any

amendments filed after the final rejection; (6) grounds for the

rejections to be reviewed (This is the key section, as it identifies

the specific determinations of the examiner to be reviewed by

the BPAI. Failure to specifically identify a rejection will result

in the waiver for appealing that rejection.); (7) statement of

facts; (8) argument (Each ground of rejection to be reviewed

must be addressed.); (9) claims section (all claims and their

status must be listed); (10) claims support and drawings

support listing; (11) if present, means plus function or step plus

function analysis; (12) evidence section, if necessary and (13)

related cases, if necessary. The Appeal Brief must not exceed 30

double-spaced pages, using 14-point font. As with everything

with the USPTO, a fee is charged for filing an Appeal Brief:

$540 for a large entity and $270 for a small entity.

with writing his or her answer. In the Examiner’s Answer, the

examiner is prohibited from raising new grounds for rejection

and must address each of the arguments presented by the

inventor in the brief.

Following receipt of the Examiner’s Answer, the inventor

is allowed to file a Reply Brief, refuting the arguments raised in

the Examiner’s Answer. The reply must be filed within two

months from the date of the Examiner’s Answer. Incredibly,

there are no fees required for filing a Reply Brief.

The inventor has the option to request an oral hearing,

but this should only be done if the circumstances would deem

it “necessary or desirable for a proper presentation of the

appeal.” The written request must occur within two months

of the date of the Examiner’s Answer and be accompanied

by yet another fee, which is $1,080 for a large entity and

$540 for a small entity. The time allotted for arguments are

20 minutes for the inventor and 15 minutes for the Examiner.

The participants may only rely on the arguments that have

been presented in their submitted papers, with no additional

information or evidence being allowed to be introduced.

After the BPAI has considered the briefs, answers

and oral arguments, if presented, it will write its decision.

The decision may come in the form of an affirmation of the

examiner’s rejection, a reversal of the rejections or remand of

the application back to the examiner for further review and

consideration. The BPAI’s decision is required to include

specific findings of fact and conclusions of law so to provide

the inventor with the ability to appeal, if necessary. Professor

Dennis Crouch recently published a study that reviewed

10,000 ex parte decisions by the BPAI from November 2009 to

June 2011. The majority of these decisions related to questions

of obviousness and anticipation for the reviewed claims. Of

the cases examined, it was found that 52% fully affirmed the

examiners’ rejections, 34% reversed and 14% affirmed-in-part.

The study also confirmed that the BPAI’s backlog continues to

grow and that for fiscal year 2011, the backlog has grown more

than 25% with over 22,000 pending appeals now waiting for

review.1

So, what happens if the decision you receive is not

favorable to your position? Several options remain available,

which include amending the claims to overcome the decision

by the BPAI or filing a single request for a rehearing on the

new grounds of rejection. Such a request for rehearing must

come within two months of the BPAI’s original decision. The

rehearing is limited to arguments in rebuttal to points that

the inventor believes have been misapplied or overlooked by

the BPAI. If the decision remands the application back to the

examiner, the prosecution is reopened, but only with regards

to any new grounds for rejection. Numerous prosecution

strategies may then be considered, including amending the

claims and filing an RCE. Any request to reopen prosecution

must occur within two months of the BPAI’s decision.

In conclusion, many options are at the disposal of an

inventor when he receives a Final Office Action. The inventor’s

course of action will depend upon the budget, the quality of

the past examinations performed on the application and the

relationship between the patent practitioner and the examiner.

It is important for the inventor to remember that receiving a

Final Office Action is not the end of the road, but rather just

one more twist in the journey to getting a patent issued.