[Patentpractice] RCE versus continuation?
Timothy Snowden
tdsnowden at outlook.com
Mon Sep 22 15:33:21 UTC 2025
I really appreciated Jeroen's summary, which is a fair description of
the approach I've found works the best. .
The best suggestion I have for the drip game is what we all already
know, so this is just an underline, not a new point: Know the prior art
- build your broadest claim to distinguish from the prior art. Then,
look at each of the key limitations that distinguish that claim from the
prior art and think like an examiner applying BRI -- then setup multiple
alternative dependent claims (including some dependent-dependent) as
backup points for beyond-BRI interpretations. Make sure those are well
supported in the spec/drawings. Now you've got an argument for #1
because usually a drip-drip-drip examiner brings in art that should have
already be brought in on the dependent claims. I find the
dependent-of-dependent claims most helpful here because otherwise the
examiner just slaps in each feature separately without considering a
combination of dependent features (they're not obligated to although
they are supposed to reasonably look ahead).
This works really well for
mechanical/electrical/hold-in-your-hand-product-focused arts.
However, I find a similar drip-drip rejection style most problematic on
101 rejections where we're having to go through 2-3 round of servoing to
the analogies the examiner will accept and then bringing the claims into
line with what the specific features of the analogized case/PEG example
the examiner/SPE has identified as defining the path to allowance for
the specific case. Because of the subjectivity of the analysis, it's
hard to pin this down in 1 round in certain art units. Continuations in
this type of scenario I believe are harmful -- you lose the funnel that
you're leading the examiner down and have to start over. I've typically
avoided appeal of 101 cases, but David is causing me to rethink my
strategy on that -- especially in light of the current PTO environment.
On 9/22/2025 10:08 AM, David Boundy via Patentpractice wrote:
> I agree with Jeroen. I file very few RCE's. There are three ways to
> handle a final OA (if teh Rule 116 paper doesn't get over the hump) --
> -- petition to withdraw premature final (80%+ successful)
> -- appeal (60% success at Pre-Appeal, and then after appeal
> brief, maybe 50% of the time the examiner gives up without an
> Examiner's Answer)
> -- RCE
> I probably do all three more or less equally. (That is, I RCE only
> about 1/3 of finals.) To get high yield, both the petition and the
> appeal require setup in the first reply to first OA. Another email
> for another day.
>
> The biggest reason for RCE's is examiners that play the "drip drip
> drip" game of lousy prior at, then a little better, then a little
> better. I don't know of much to do about that -- does anyone have a
> suggestion?
>
> On Mon, Sep 22, 2025 at 10:57 AM Valensa, Jeroen via Patentpractice
> <patentpractice at oppedahl-lists.com> wrote:
>
> I dislike RCE’s in general – the fees are a big part of the
> reason. But beyond that, I think that an RCE (and particularly a
> second RCE) is emblematic of inefficient prosecution. My goal is
> to have the claims in shape for allowance by the final rejection.
> The way to do that is to file the application with claims that are
> well-drafted, in light of the known prior art, to be able to make
> good arguments over the expected obviousness rejections. I still
> want to be aggressive, particularly with the independent claims –
> a first-action allowance is not what I’m looking for. But I don’t
> want to waste examination rounds trying to figure out what the
> actual scope of the invention should be. Once you get that first
> non-final, you should have a good idea of the strength of the
> prior art on which the examiner will rely. At that point, I’m
> willing to make the necessary claim amendments to overcome that
> art. But I’d like to have the claims in such a shape that, were
> the examiner to go final with the same art, I’m willing to take
> those claims to appeal. Sometimes there is a nuance to the
> examiner’s arguments that are only properly expressed in the final
> rejection, and an RCE may be necessary to make further refinements
> to the claims. But in general, I like to have the claims in good
> enough shape by the time they are finally rejected that I am
> comfortable taking the arguments to the PTAB.
>
> Quite often, if the case for patentability is well-argued in the
> appeal brief, the examiner will reopen prosecution anyways.
> Sometimes you get better rejections back, but it will be a
> non-final so another opportunity to amend the claims if needed in
> order to overcome the art, before the examiner again goes final.
> Sometime it’s a notice of allowance, when the examiner realizes
> that their arguments are not going to be convincing to the PTAB.
>
> *Jeroen Valensa***
>
> Assistant General Counsel – Intellectual Property
>
> <https://www.aosmith.com/>
> *11270 W Park Place*
>
> *Milwaukee, WI 53224*
> phone: 414-359-4083
> mobile: 414-915-9065
>
> email:jevalensa at aosmith.com <mailto:jevalensa at aosmith.com>
>
> *From:*Patentpractice <patentpractice-bounces at oppedahl-lists.com>
> *On Behalf Of *Carl Oppedahl via Patentpractice
> *Sent:* Saturday, September 20, 2025 5:03 PM
> *To:* For patent practitioners. This is not for laypersons to seek
> legal advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Carl Oppedahl <carl at oppedahl.com>
> *Subject:* [Patentpractice] RCE versus continuation?
>
>
>
>
> This message has originated from an *External Source*. Please use
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>
>
>
> Hello folks. I just got done paying the fee for a second RCE in
> one of my clients' cases. Ouch! $2860 for a non-small entity.
>
> I then went to the trouble to add up the filing fee, search fee,
> and exam fee that would have been paid in an ordinary
> continuation. Looks like that adds up to $2000.
>
> I note that the number 2000 is smaller than that number 2860.
>
> Which got me thinking about the question of the subject line. RCE
> or continuation?
>
> I guess in most ways the RCE is the better path despite the need
> for handing over more money, right?
>
> * Maybe the case has enough IDS references to be in
> IDS-size-penalty world. In the continuation, an IDS size
> penalty would need to be paid. The RCE saves having to pay
> that penalty.
> * Maybe there are lots of excess claims in the case. The RCE
> saves having to pay again for the excess claims.
> * For a continuation, I would have to identify and upload spec,
> claims, abstract, and drawings. Which among other things
> presents the risk that I will screw up and upload the wrong
> file or a wrong version of a file. The RCE eliminates risk of
> my screwing this up, and saves the mouse clicks required for
> the uploads.
> * For the continuation, to avoid the malpractice risks of DOCX
> filings, I would have to pay the $430 penalty. The RCE saves
> me from having to pay that fee.
> * Maybe enough years would have dragged on by now that the
> penalty fee for presenting a domestic benefit claim after so
> many years would kick in. The RCE avoids that penalty.
>
> What factors favor the continuation? Well, one thing is,
> sometimes the client is not sure yet how the client wants to deal
> with the most recent rejection. If so, then the continuation is
> ideal because you could (for example) intentionally do something
> to trigger a notice of some kind. Put in a placeholder
> multiple-dependent claim and not pay for it, triggering a Notice
> to pay for the RCE. Then maybe within two months, cancel the MDC
> and along with it, hand in the response to the most recent
> rejection. (With the RCE it would have been required that the
> response accompany the RCE.)
>
> Did I get the pros and cons right? Are there other pros and cons
> that I missed?
>
> --
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>
> --
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>
> <https://www.iam-media.com/strategy300/individuals/david-boundy>
>
> *David Boundy *| Partner |Potomac Law Group, PLLC
>
> P.O. Box 590638, Newton, MA 02459
>
> Tel (646) 472-9737| Fax: (202) 318-7707
>
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