\-\-\-\--Original Message\-\-\-\--\
From: Nancy Reeves \[mailto:nlreeves@yahoo.com\]\
Sent: Friday, September 28, 2007 8:16 PM\
To: BPAI Rules\
Subject: Ex Parte Appeal Rules

Greetings,

I am writing in regard to the proposed changes to the

Rules of Practice before the Board of Patent Appeals

and Interferences in Ex Parte Appeals, published in

the Federal Register, Volume 72, Number 145 on July

30, 2007.

The Board appears to have been well intentioned, in

its attempt to expedite the processing of ex parte

appeals, however many of the proposed rules are unduly

burdensome, costly, and will prolong prosecution - or

in the alternative, will cause inventors to give up

their right to a patent for their inventions because

they can no longer afford the costs associated with

obtaining this protection for the fruits of their

innovative efforts. The impact will be particularly

felt by independent inventors, who are unlikely to

have the financial resources available to corporate

inventors.

First, the Board is charged with reviewing adverse

decisions of the examiners. Despite this limited

charge, Proposed Rules 41.37(q) and (r) require the

briefing of decisions which are not adverse. In

instances when there is no disagreement between the

examiner and the applicant, no briefing should be

required.

Second, the applicant is required to fully brief not

only decisions which are not adverse (as noted above),

but each and every claim including elements of claims

which are not in dispute. In addition, there is no

limit on the number or length of adverse decisions

against the applicant. In an unfair and sharp

contrast, Proposed Rule 41.37(v)(5) and 41.41(d)

limits the length of the briefs for appeal and reply

to 15. It is entirely unreasonable to both require

unnecessary briefing and to limit the number of pages

in which the applicant must brief not only the

undisputed material but the disputed material as well.

The briefs should not be limited to a particular

length.

Third, the limitation in Proposed Rule 41.30 on what

constitutes the record on appeal and Proposed Rule

41.37(t) which requires the appellant to provide the

Board with essentially the entire prosecution history

is unfair, in the first instance, and unduly

burdensome in the second. The material required by

41.37(t) is already in the file and readily available

to the Board, requiring the applicant to provide an

additional copy does no more than impose an

additional burden of time and money on the applicant

without providing additional benefit to the Board.

Finally, Proposed Rule 41.56 overreaches the statutory

authority of the board, by authorizing it to impose

sanctions on applicants for misconduct. The statutory

authority of the Board in ex parte appeals is limited

to the review of adverse decisions; the Proposed Rule

should be rejected as exceeding the statutory

authority of the Board.

In conclusion, the Proposed Rules are likely to have

the effect of further burdening the appeals process

for those with enough resources to actually pursue an

appeal, given the dramatically increased costs likely

to be associated with pursuing such an appeal. I urge

the rejection of the Proposed Rules particularly, but

not limited to, the Rules discussed above.

Respectfully,

Nancy L. Reeves

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