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Authors

Susan Perng Pan

Abstract

This article discusses the merits of appealing rejections to the Board of Patent Appeals in comparison to continued ex parte prosecution before the Examiner. The analysis takes into account recent decisions rendered by several patent panels and recent precedent of the Court of Appeals for the Federal Circuit. Recommendations are offered to place claims in better condition for appeal and for the types of arguments to be made, as well as to guard against potential pitfalls during prosecution.

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