**From:** Calvert, Ian \[mailto:ICalvert@wcsr.com\]\
**Sent:** Friday, September 07, 2007 10:51 AM\
**To:** BPAI Rules\
**Subject:** Ex Parte Appeal Rules

> Ian A. Calvert

September 7, 2007

> Mail Stop Interference
>
> Director of the United States Patent and Trademark Office
>
> P.O. Box 1450
>
> Alexandria, VA 22313-1450
>
> Re: Comments on Notice of Proposed Rulemaking for \"Rules of Practice
> Before the Board of Patent Appeals and Interferences in Ex parte
> Appeals,\" 72 Fed. Reg. 41472 (July 30, 2007)

 

Dear Sir:

The following comments concerning the above-identified Notice of
Proposed Rulemaking are submitted for your consideration. Please note
that these comments are personal to me and should not be attributed to
the firm of Womble Carlyle Sandridge & Rice, PLLC, or any of its
attorneys. Each comment is directed to a specific rule or rules.

1\. [Proposed Bd. R. 41.3 and Bd. R. 41.4(a)]{.underline}: On page 41472
of the Notice, under \"Timeliness of Petitions,\" it is stated that the
Chief Administrative Patent Judge will determine (for the most part)
whether extensions of time are to be granted. Also, in various Board
rules (e.g., 41.44(c), 41.47(d), 41.52(c)), it is stated that a request
for extension of time must be presented as a petition under §41.3. Thus,
the Notice gives the impression that all requests for extensions of time
under 41.4(a) must be by way of a petition under 41.3. If this is so,
then 41.4(a) should be amended to provide that a petition under 41.3 is
required. If it is not so, then the Notice should explain under what
circumstances a petition is not required.

2\. [Proposed Bd. R. 41.33(d)]{.underline} provides that evidence filed
after a notice of appeal and prior to the appeal brief may be admitted
if \"the examiner determines that the evidence overcomes
[some]{.underline} or all rejections under appeal and appellant shows
good cause . . . \" (emphasis added). However, the Notice on page 41473,
third column, states that \"Even where good cause is shown, if the
evidence does not overcome [all]{.underline} rejections, the evidence
would not be admitted. Alternatively, the examiner could determine that
the evidence does not overcome [all]{.underline} the rejections and on
that basis alone could refuse to admit the evidence.\" (emphasis added)
This explanation appears to be inconsistent with the language of the
proposed rule, in that it does not allow for the evidence to be admitted
if it only overcomes [some]{.underline} of the rejections.

3\. [Proposed Bd. R. 41.37:]{.underline} While it is appreciated that
the proposed rule changes are intended to allow the Board to resolve ex
parte appeals in a timely manner, in the case of a simple appeal with
very few issues the numerous requirements of proposed rule 41.37 seem
disproportionately burdensome for the applicant and may have an effect
opposite to what is intended. It is therefore suggested that where, for
example, there is only one ground of rejection and all claims stand or
fall together, some of the items listed in 41.37(e) might be dispensed
with if, for example, the brief were limited to ten pages, and there
were no affidavits, declarations, or other evidence relied on by the
applicant.

4\. [Proposed Bd. R. 41.37(f)]{.underline}: It is not clear what is
meant by the proposed rule's requirement for identification of the name
of the real party in interest and of the real party in interest \"in
such a manner as to readily permit a member of the Board to determine
whether recusal would be appropriate.\" When the real party in interest
(e.g., the assignee) is identified by name, as the rule now requires,
what additional information would have to be provided in order to comply
with the quoted language of the proposed rule? Any such additional
information should be defined in the rule, rather than requiring the
practitioner to guess at what it might be.

5\. [Proposed Bd. R. 41.37(i)]{.underline}: It is suggested that this
section of 41.37 should precede parts (f), (g) and (h), and \"Table of
Contents\" should be item (1) in 41.37(e).

6\. [Proposed Bd. R. 41.37(o)]{.underline}: It seldom occurs that an
argument made in an appeal brief is exactly the same as the argument
made to the examiner; it may be restated in different language, or
differently nuanced depending upon the examiner\'s response. Is an
argument characterized under this section as \"not previously been made
to the examiner\" intended to be limited to an entirely new argument, or
would it include any argument which is not repeated to the Board in the
brief [exactly]{.underline} as it was presented to the examiner?

7\. [Proposed Bd. R. 41.37(v)]{.underline}: Items (2) to (4) of this
part should correspond to the requirements of 37 CFR 1.52(a)(1)(ii) and
(b)(2) for patent applications and amendments. It is not clear why
double spacing, larger margins, and a larger font are necessary for
briefs; they will increase the size of the file, and may lead to
mistakes by clerical personnel who are used to complying with 37 CFR
1.52 when preparing papers for filing in the PTO.

8\. [Bd. R. 41.51(f)]{.underline}: The time period for response to the
Board's order under this section should be extendable by petition under
41.3, just as various other appeal-related time periods are. As this
rule now stands, the time period for response is \"non-extendable,\" so
that an applicant is forced to employ the unwieldy procedure of
petitioning under 37 CFR 1.183 to waive the rule if unable to comply
with the time period set by the Board.

9\. [Bd. R. 41.52]{.underline}: The word \"rehearing,\" wherever it
appears in the title and text of this rule, should be changed to
\"reconsideration.\" The term \"rehearing\" implies, incorrectly, that
an oral hearing may be held.

10\. [Proposed Bd. R. 41.52(d) and (f)]{.underline}: Proposed 41.52(d)
provides that \"A request for rehearing shall state with particularity
the points believed to have been misapprehended or overlooked by the
Board\"; 41.52(f) requires identification of the point(s) misapprehended
or overlooked by the Board. These requirements may be appropriate under
normal circumstances, but are not appropriate for a request for
rehearing submitted under 41.50(d)(2) in response to a new rejection by
the Board. In such a situation, the applicant may not believe that the
Board has \"misapprehended or overlooked\" anything, but rather wishes
to present arguments as to why he/she believes that the Board\'s new
ground of rejection is not sustainable on the merits. It is therefore
suggested either that another section be added to 41.52 to deal with
requests for rehearing under 41.50(d)(2), or that 41.52(d) and (f) be
modified to provide that the requirements relating to points believed to
have been "misapprehended or overlooked" do not apply to requests under
41.50(d)(2).

> Respectfully submitted,
>
> /s/ Ian A.
> Calvert                                                                                       
>  
>
> Ian A. Calvert
>
> Reg. No. 50,186

 

Ian A. Calvert\
Womble Carlyle Sandridge & Rice, PLLC\
One West 4th Street\
Winston-Salem, N.C. 27101\
(336) 721-3734\
Fax: (336) 726-6062\
E-mail: icalvert@wcsr.com

 

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