Sometimes appealing an Examiner’s rejection is the only practical option. If no claims of valuable scope have been allowed or indicated as allowable, and all clarifying claim amendments, supporting evidence and salient arguments have been entered and considered, there is basically no choice but to appeal. There is little sense in refiling the same arguments over and over, or to unnecessarily narrow claims and lose valuable scope to push an application through the United States Patent and Trademark Office (“USPTO”).
An appeal may be filed after a second or final office action. MPEP § 1204. Patent appeals are decided by the Patent Trial and Appeal Board (“PTAB” or “Board”) of the USPTO. Even if you lose on appeal, prosecution can continue afterwards, and the Board’s decision often provides valuable guidance on how to proceed.
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