Re: Response to final Office Action

yp11 <[EMAIL PROTECTED]> wrote:

> I have an interesting situation on which I would appreciate comments
> from those who may have had a similar problem.
> 
> I received a final Office Action from the examiner which I discussed
> with the applicant who indicated a basic difference between the
> invention and the cited prior art. Let's say the invention discloses a
> direct current passage through a substance and the prior art all
> requires an alternating current.
> 
> I discussed this with the examiner by phone and he essentially agreed
> that this provides a sufficient distinction for patentability, but he
> asked me to submit a proper argument, which I did.
> 
> However, in his advisory action, the Examiner maintained his rejection
> indicating that he did not agree that all prior art references
> required alternating current and that according to him one of these
> references is so worded that it could use direct current.

My sympathies.  That is *so* frustrating.


> 
> The applicant disagrees with the examiner and wishes to submit an
> affidavit from an expert that would prove the examiner wrong. It will
> take however a month or two to have such affidavit prepared and filed.

And the Examiner may well not accept it since it is a final action.

> 
> The initial three month term under the final office action expires in
> a few days, so there is not sufficient time to file the affidavit
> before this term expires. However, there are extensions of up to six
> months that can be used. The applicant is also ready to appeal the
> examiner's rejection.
> 
> What would be the best procedure in this case?

Appeallig would be good if your file is complete enough.  If you really
need that affidavit, though, you'll have to file it and (likely) file a
continuation to get it in.

> 
> Submit the affidavit (after paying an extension fee) in about a month
> time, followed by filing of the notice of appeal.
> 
> File an RCE and submit the affidavit as part of it.
> 
> File a notice of appeal now and submit the affidavit as part of the
> appellant's brief. Is this possible?

No it isn't.  IIRC - double check this.

> 
> Any other suggestions?