Successful appellants have proven factual errors including claim and reference interpretation errors. Similarly, successful appellants have proven legal errors including (a) non-analogous art cited by the patent examiner, (b) impermissible hindsight by the patent examiner, (c) inoperable combination of references, and (d) references cited by the patent examiner that taught way from the patent application. Finally, successful appellants included (a) thoughtful definitions of a person having ordinary skill in the art (PHOSITA) and (b) records having evidence of secondary indicia of non-obviousness. However, even if successful in overcoming the patent examiner’s rejection, appellants must consider the chance the Board will assert sua sponte rejections for claims that (i) do not recite patentable subject matter, (ii) are indefinite Hybrid claims reciting two statutory classes, (ii) lack enablement, and (iii) lack written description even for patentable claim features added in amendments during prosecution.
An applicant should appeal when properly interpreted claim language recites features that distinguish over properly applied references. In the heat of prosecution, Applicants sometimes lose sight that the pending claims need to clearly recite what is argued. If the pending claims can be amended to better support the arguments, a request for continued examination should be filed with claim amendments instead of an appeal. However, if the applicant believes that the invention has been optimally claimed and that the claims are distinguishable over the applied references, continuing prosecution is usually an inefficient use of resources. Rather, appealing the application is necessary.
Appeal to the Board is worthwhile since after successful appeal to the Board 80% of applications issue as patents.
Factual errors include claim and reference misinterpretations by the patent examiner.
Legal errors include (a) non-analogous art cited by the patent examiner, (b) impermissible hindsight by the patent examiner, (c) inoperable combination of references, and (d) references cited by the patent examiner that taught way from the patent application.
Success on appeals can increase when appellants include (a) definitions of a person having ordinary skill in the art (PHOSITA) and (b) records having evidence of secondary indicia of non-obviousness.
Appellants must balance success on appeal with the risk of narrow claim interpretations and sue sponte rejections for claiming non-patentable subject matter or amended claims that, although allowable over art, fail written description requirements.
In the end, Appealing final rejections from "hard-line" patent examiners may be an applicant’s only chance for reversing improper obviousness rejections to obtain an allowance for their application.
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