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It appears that I will have to appeal the decision of an examiner, and if I could do so without waiting for a final rejection, I might be able to catch the tail end of the Fast-Track Appeals Program, which may have a limited number of slots each year (it did last year). But this rests on the meaning of the words "twice rejected." In my case I canceled all claims after the first OA and submitted new claims. So if these are rejected in a second office action (or just some of them) does twice rejected apply?

Note: this examiner is said to be difficult, with a 15% allowance rate. She called me after my response to her first OA (which had rejected all claims) and offered to approve amendments that would have gutted the value of the patent. I turned it down.

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35 U.S.C. 134 Appeal to the Patent Trial and Appeal Board. “(a) PATENT APPLICANT.— An applicant for a patent, any of whose claims has been twice rejected . . .”

If the claims are completely different I do not see that any claim has been rejected twice. Also I see that a very small number of slots (8) were used last quarter.

And the PTAB may not be any more helpful than the examiner. An appeal is a fairly legalistic process and you can loose easily on a technicality in your brief. You might be better off spending your money getting advice from someone who has gone through the process a few times.

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  • Thank you, George. I sort of expected that was the case. I actually have done appeals in the past as a pro se, winning 3 out of 4, but its been twenty years. Still, I figure I can do it again, esp. as this examiner made so many logical stretches and outright mistakes in the first OA. And while it's good to hear that so few fast track slots were used last quarter, I wonder if that was all that were left. Only 500 were allowed, beginning in July 2020, and probably many didn't know about it.
    – Lou
    Aug 12, 2021 at 16:15
  • The site uspto.gov/patents/ptab/fast-track-appeals-pilot-program actually says 9 used in the quarter and 117 left. It’s problems with the second the OA rejecting the appealed claims that will be at issue in your appeal. Also, unless they are horrible I have generally taken any allowed claims an examiner offered and filed a continuation to fight for better claims in another patent.
    – George White
    Aug 12, 2021 at 20:05
  • "It’s problems with the second the OA rejecting the appealed claims that will be at issue in your appeal"....Yes, and I just got the second OA, which she didn't make final. Just glancing over it, her arguments look better than before and the need for an appeal is looming larger. I've found a USTPO site for PTAB precedential and informative decisions, and I wonder if there any other helpful sites for appeals.
    – Lou
    Aug 12, 2021 at 21:11
  • You might make that a new question. Of course you will need to respond to this OA and if the rejection isn’t removed or a new rejection stated then you can appeal .
    – George White
    Aug 12, 2021 at 22:21

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