***Microsoft***

Microsoft Corporation

One Microsoft Way

Redmond, WA 98052-6399

***Via Electronic Mail***

***<BPAI.Rules@uspto.gov>***

September 28, 2007

Under Secretary of Commerce for Intellectual Property

And Director of the United States Patent and Trademark Office

United States Patent and Trademark Office

P.O. Box 1450

Alexandria, VA 22313-1450

Attn: Fred E. McKelvey and Allen R. MacDonald

Comments on Notice of Proposed Rule Making: "Rules of Practice Before
the Board of Patent Appeals and Interferences in Ex Parte Appeals"

[Federal Register/Vol.72, No. 145/July 30, 2007]{.underline}

Microsoft appreciates the opportunity to offer comments on the notice of
proposed rule making relating to rules of practice before the Board of
Patent Appeals and Interferences in Ex Parte Appeals published in the
Federal Register on July 30, 2007. The USPTO states that the changes are
needed to permit the Board to handle an increasing number of ex parte
appeals in a timely manner, and has set forth five objectives for the
proposed rule changes: (1) provide reviewers with a clear and complete
statement of an appellant's position at the time of filing an appeal
brief; (2) minimize the pendency of appeals before the Office; (3)
minimize the need for lengthy patent term adjustments; (4) provide
uniform treatment of requests for an extension of time filed after an
appeal brief is filed; and, (5) make the decision-making process more
efficient. In concert with our comments below, we believe the USPTO
objectives of providing the parties with clear and complete positions at
the time of the appeal, minimizing pendency and lengthy patent term
adjustments, providing uniform treatment, and making the process more
efficient is laudable and deserving of greater consideration. While we
appreciate the USPTO's efforts to make the appeal process more effective
and timely, we fail to see a showing by the USPTO in the proposed
changes how such objectives are accomplished, and thereby do not support
the changes as proposed.

**General Overview**

In the past few years, Microsoft has grown to be one of largest
customers of the USPTO. In 2006, we had the third largest number of
published patent applications by the USPTO and are currently prosecuting
well over 15,000 pending applications. We employ the services of over
100 patent practitioners around the country and were the 13^th^ largest
recipient of U.S. patents for 2006.

As one of USPTO's largest patent applicants, Microsoft has continuously
supported a variety of USPTO efforts to improve patent quality and
enhance examination efficiency. By way of example, Microsoft has
supported fee adjustments and full access to fee revenue to fund
examination initiatives, and proactively embraced the electronic filing
and prosecution of patent applications. It is with this spirit of
partnership and cooperation that Microsoft is using this opportunity to
comment on these proposed changes to the practice before the Board of
Patent Appeals and Interferences (BPAI) in Ex Parte Appeals.

As set forth by the USPTO in the background and rationale for the
proposed rules, the changes propose to adopt practices similar to those
of the Court of Appeals for the Federal Circuit in such a way as to
allow the Board to continue to resolve *ex parte* appeals in a timely
manner with the increasing number of appeals by providing a clear and
complete statement of an appellant's position at the time of filing an
appeal brief. However, the changes as currently proposed do not adopt
Federal Circuit briefing requirements which equally govern all the
parties to an appeal to the Federal Circuit, do not show how the changes
address the words and the intent of the statute governing the BPAI, or
do not set forth how these rules make the appeal process more efficient
and timely than the current rules which were put in place as recently as
September 2004.

The briefing practices set forth by the Court of Appeals for the Federal
Circuit apply equally to all the parties in the *inter parte* appeal. In
contrast, the current proposals are applicable only to appellant's
briefs and are not applicable to the Examiner's Answer, thereby
potentially prejudicing positions of the appellant by placing
constraints on the issues and/or arguments that may be presented.
Examples include limitations on the number of pages in the argument
section of appellant's brief, which constrain the ability of appellant
to effectively present all relevant arguments while, simultaneously,
imposing rules that waive all arguments not addressed in the argument
section of the brief.

Also, the establishment and duties of the BPAI cannot necessarily be
equated with those of the Federal Circuit as inferred to a certain
extent in the explanation of the proposed rules. The duty of the BPAI as
set forth in 35 U.S.C. 6 in *ex parte* appeals is to "review adverse
decisions of examiners upon applications for patents" and the proposed
rules create an imposed conflict with those words when taken in the
context of 35 U.S.C. 102 that a "person shall be entitled to a patent
unless . . ." there is a showing of unpatentability. The statutes
require that the BPAI first ascertain whether the examiner has correctly
presented a prima facie case of unpatentability, and if so, then the
BPAI determines if the evidence presented is of such weight to overcome
the showing of unpatentability. The proposed rules really inverts that
premise of the statutes by not first reviewing the decision of the
examiner, but by assuming that the examiner is correct and limits the
review of the BPAI to arguments of rebuttal and a showing of
entitlement. Contrary to the statute, the rules shift the burden by
requiring the appellant to affirmatively show the invention is
patentable through mandated arguments and evidence.

Of equal or greater concern is the significant time and cost increases
imposed upon an appellant to comply with the proposed rule changes
without any showing or metrics in the explanation of the proposed
changes of how the changes make the appeal process more effective and
timely. With all the very specific formatting and additional
requirements to be incorporated into a brief and the appendix content,
the cost of a brief will be at least double today's cost. There is no
showing by the Office how the proposed rules will effectuate efficiency
gains over the current rules that were put into effect September 2004.
To reasonably justify the time and cost incurred upon appellant by the
proposed changes, a significant efficiency gain should need be realized
and shown by the Office.

**Specific Comments**

The proposed Bd. R. 41.31(a) imposes a signing requirement for a notice
of appeal. It is unclear from the explanation of the proposed rules why
a signing requirement should be imposed. It requires an additional
burden on applicant without identifying any particular problem created
by current practice or achieves no clear benefit.

The proposed Bd. R. 41.37(n) would require an appeal brief to include a
"statement of facts" that would in an objective manner set forth the
material facts relevant to the rejections on appeal. While Microsoft
appreciates the Office explanation for the proposed change of not
expecting the Board to search the record to determine whether a
statement of fact is supported by the evidence, it is not clear how this
improves the appeal process over the current appeal requirements and is
this just form over substance. Should there be a substantive gain to the
appeal process by the formatting requirement, then one would expect to
have an equal gain by such a requirement in an Examiner's Answer.

The proposed Bd. R. 41.37(o) requiring an analysis explaining, as to
each rejection to be reviewed, why the appellant believes the claims are
allowable over the examiners assertion shifts the burden, as set forth
in the general comments above, onto the appellant to "prove" compliance
with the statutes rather than reviewing the Board's statutory charge of
reviewing the examiner's adverse determination. While a brief should and
can help guide the Board in their review of an examiner's rejection,
there should be no presumption of correctness in the examiner's
rejection as a starting position. The proposal also provides that any
conclusion reached by an examiner that is not challenged is presumed to
be correct. The Office fails to cite any authority of this proposition
that unchallenged examiner findings are presumptively correct.

The proposed Bd. R. 41.37(o) (2) imposes a restriction that the Board
would only consider arguments that are presented in the argument section
of the appeal brief or the argument is waived. This limitation taken in
concert with Bd. R. 41.41(d) which incorporates Bd. R. 41.37 has the
potential of denying appellant the opportunity to argue an issue. Any
argument which may be tangential to an issue not directly stated in the
Examiner's Answer cannot be presented to the Board since a Reply Brief
under Bd. R. 41.41(d) is limited to points made in the Examiner's Answer
and the arguments must be made in the argument section or thereby waived
by appellant.

Proposed Bd. R. 41.37(o) (3) would require that appellant specifically
identify each point raised by the examiner and indicate where appellant
previously responded to the point in the prosecution of the application.
The Office indicates that this is "intended to be efficient protocols
for assisting the Board in focusing on any differences between the
examiner's and appellant's position." While no efficiency gains are
indicated by the Office, should there be a gain, the same type of
requirements should be in an Examiner's Answer with cross reference to
facts or arguments raised by the appellant and where the examiner
addresses the argument in the prosecution of the application.

Proposed Bd. R. 41.37(t) would require the appeal brief to contain an
"evidence section" that is to include any material admitted into the
record by the examiner during prosecution of the application. The
section is not cost effective for the Office or for appellant since it
requires the appellant to assemble all papers that are already of record
in the file. With the Office's investment in an IFW, all of these papers
have been captured by the Office and are readily available to the
appellant through the private PAIR and to the Board through the IFW
system. If this is a mere convenience for the Board, a listing of the
documents relied upon and a marker to the IFW should meet that need.

Proposed Bd. R. 41.37(v) (5) provides a page limitation on the length of
the appeal brief and prohibits incorporation of arguments by reference
to other papers in evidence. Since the proposed rules require that the
appellant specifically and independently address each point that has
been raised by the examiner in order for the issue to be reviewed by the
Board, a limit on the number of pages in an appeal brief is irrational
when there are no limits on an examiner's final Office action nor on an
Examiner's Answer. Thus, the examiner is able to raise any number of
issues and complexities while Appellant is left in the untenable
position of waiving any issues not addressed within the set page limit.
Furthermore, the page limitation appears arbitrary with no basis for the
number specified, while the number of issues on appeal are not limited,
nor are the number of claims to be independently addressed. Such a
position appears to be contrary to the goal of providing the Board with
a clear and complete view of Appellant's position.

The proposed Bd. R. 41.41 relates to the form and content of a Reply
Brief which now must conform in a similar manner to the proposed
requirements for an Appeal Brief. Microsoft's comments in response to
the proposed rule changes for an Appeal Brief, as set forth above, are
similarly applicable to the proposed rule changes for a Reply Brief.

Proposed Bd. R. 41.56 provides that the Board could impose sanctions
against appellant for misconduct. While there may be instances of
misconduct where sanctions are appropriate, there is no showing or
evidence presented anywhere in the rule proposal that the current
practice before the BPAI requires this type of rule. Also, the
requirements for the elements to be included in the appendix section of
an Appeal Brief, and this type of new provision re sanctions appear to
exceed mere changes to interpretive rules or rules of practice and
procedure, and would further appear to meet the requirements for a
Regulatory Flexibility Act analysis.

Microsoft appreciates the Office's efforts to continue working to
address the quality of the appeal process, minimizing pendency and
lengthy patent term adjustments, providing uniform treatment, and making
the process more timely and efficient, and we are committed to working
with the Office to address these common concerns. We thank the USPTO for
considering our views and should you have any questions concerning our
response, please contact us at the address below. We are always
available to assist the USPTO in any further partnership needs.

Respectfully submitted,

![](media/image1.jpeg){width="2.475in" height="0.8in"}

D. Bartley Eppenauer

Chief Patent Counsel

Associate General Counsel

IP & Licensing - Patent Group

Legal and Corporate Affairs

<barte@microsoft.com>

▪ Tel 425-703-0645

▪ Fax 425-936-7329