[Patentpractice] New Examiner?

[David Boundy]

Scott's 60% affirm rate isn't the whole story.  Some years ago (like 15) I
asked for ALL the statistics by Freedom of Information Act.   When you add
up --
      -- reverse on pre-appeal
      -- examiner can't write an Examiner's Answer and gives up
      -- Board reverses
the *win* rate is 70-80%   The Board affirms only about 20% of appealed
issues.

This varies a lot by technology and issue.  For example, the affirm rate
for § 101 * Alice* issues is much higher than for § 112 and § 102/103



On Tue, Dec 5, 2023 at 9:50 PM Scott Nielson via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> Regarding PTAB stats, this page
> <https://www.uspto.gov/patents/ptab/statistics> has what you are looking
> for. In FY 2023
> <https://www.uspto.gov/sites/default/files/documents/fy23_appeal_receipts_and_dispositions_september2023_.pdf> (just
> ended in Sept), the PTAB affirmed the examiner 58.3% of the time,
> affirmed-in-part 9.1% of the time, and reversed 31.9% of the time.
>
> I file a lot of appeals and I've had good luck. However, I just lost one
> the other day where the PTAB rehabilitated the examiner's lousy rejections
> (complete with new grounds of rejection for some of the dependent claims I
> thought we would for sure win on). It goes to show that there is always an
> element of uncertainty when you go to the Board.
>
> *Scott Nielson*
>
> 801-660-4400
>
> ------------------------------
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> on
> behalf of Katherine Koenig via Patentpractice <
> patentpractice at oppedahl-lists.com>
> *Sent:* Tuesday, December 5, 2023 6:42 PM
> *To:* patentpractice at oppedahl-lists.com <patentpractice at oppedahl-lists.com
> >
> *Cc:* Katherine Koenig <katherine at koenigipworks.com>
> *Subject:* [Patentpractice] New Examiner?
>
>
> Hi everyone,
>
>
>
> I’m prosecuting a US-inbound case for a mechanical product.  I’ve had a
> terrible go with the Examiner, who appears to be steered by his SPE’s
> opinion about the case.  According to PatentBots, the Examiner has a 64%
> 3-year grant rate (slightly lower than his art unit) and his SPE has a *0%
> *3-year grant rate (slightly lower than [insert villain here]).  The
> client is an FA, and he and his client are both really hoping for a better
> chance of patentability.
>
>
>
> My understanding is that there’s no way to request a different Examiner,
> and even DIVs, CONs, and CIPs are likely to be assigned to the same
> Examiner.  The only way to get a different Examiner is to present claims
> that would move the application to a different art unit.  Is this correct?
> I hope someone has a magic strategy that I don’t know about!
>
>
>
> Statistically, does the PTAB uphold a rejection more often than it
> reverses?  Any input or suggestions would be welcome, thank you!
>
>
>
> Best regards,
>
>
>
> Katherine
>
>
>
> Dr. Katherine Koenig
>
> *Registered Patent Attorney*
>
> Koenig IP Works, PLLC
>
> 2208 Mariner Dr.
>
> Fort Lauderdale, FL 33316
>
> (954) 903-1699
>
> katherine at koenigipworks.com
>
>
>
> *Targeted Intellectual Property Strategy*
>
>
>
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