[Patentpractice] New Examiner?

[Timothy Snowden]

Katherine -- since you have PatentBots (good!) -- 2 thoughts with this 
Examiner:

1) Can you find an analagous case the Examiner has allowed? Use that to 
find out what really moves the Examiner's opinion. Sometimes you find 
surprising tidbits.
2) What is the Examiner's success at PTAB? Sometimes it's surprisingly 
low --> plan for Appeal but make sure winning args are prepped first. 
Sometimes it's surprising how an Examiner changes mind when writing 
reply brief -- again, might consider steering to Appeal. Examiner highly 
successful at appeal? see #1. Also, look at /history/ of apps that were 
appealed on PB. Sometimes very helpful.

Re: diff examiner -- I've never tried this exactly, BUT I have had 
success with new apps with PB's Art Unit Steering...
I've been wondering if you might not be able to write a CIP and draft 
the claims using PB Art Unit Steering to get into a different art unit?
Curious if anybody has tried this.

Also -- SPE is usually artificially low. Not uncommon for '0%' 
allowance. I think it's because they don't get credit for NOAs once 
they're a SPE.

On 12/5/2023 7:42 PM, Katherine Koenig via Patentpractice wrote:
>
> 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 <mailto:katherine at koenigipworks.com>
>
> /Targeted Intellectual Property Strategy/
>
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