**From:** Daniel Baker \[mailto:sweet_virtuoso@yahoo.com\]\
**Sent:** Friday, September 28, 2007 6:20 PM\
**To:** BPAI Rules\
**Subject:** Ex parte Appeal Rules \[Strongly Against\]

Dear Sir,

 

I am against all aspects of the proposed new rules regarding appeal
practice.  They are unneeded, mean-spirited, and one-sided against IP
practitioners.

 

The USPTO is in direct violation of the paperwork reduction act of
1995 by not submitting a complete set of the proposed rule changes to
OMB for review.  What is the extra burden to applicants?  The indicated
OMB control number 0651-0031 has nothing to do with additional
paperwork due to proposed changes in appeal practice.  Thus, the USPTO
is subject to a class action lawsuit.

 

The provision to provide a \"claims support section\" for all appealed
claims is unconstitutional.  The provision amounts to every appealed
application inherently having a \"new matter\" rejection.  Nor does the
USPTO have any legal authority to impose a \"new matter\" rejection
while prosecution is closed.  Also, method claims do not require
drawings. Thus, the \"drawing analysis section\" is moot.  Likewise, the
\"record on appeal\" proposal is a duplicative waste.  A novel idea
would be to require the Board panel members to confirm by
signature that they each actually read the entire application and the
papers associated therewith.

 

The page limit proposal is unconstitutional, especially in light of the
USPTO not preventing examiners from giving cumulative rejections.  I can
provide evidence of 80+ rejections in a single Office Action.  To be
able to properly fully respond to such rejections under the new page
limit would be impossible.  Also, the Board is an Agency panel under the
executive branch.  It is not a Federal panel under the judicial branch. 
Again, imposition of page limits would be an illegal act.

 

If the USPTO truly wanted to streamline patent prosecution then it would
limit the number of times prosecution can be reopened, especially
following a Board decision. If I alone prosecute many applications that
are stuck in a legal black hole (because of constant reopenings), then I
can\'t image what the IP community as a whole faces.  The USPTO needs to
address the common sense issues first, else I agree with many
others that it should have a complete house cleaning in management. 

 

The current appeal rules work just fine.  The current Board members
who can\'t now make proper decisions should be replaced.  The entire IP
community should not have to dumb down to the Board\'s lowest
denominator.  Which is in effect what the new rules attempt to do.

 

I was a primary examiner for almost 20 years and am currently a patent
practitioner for almost 10 years.  I am quite familar with the inner
workings of the USPTO, and it is in deep trouble.  Why does the USPTO
refuse to acknowledge the current small ratio of examiners to
active patent registration numbers in comparison to previous years (when
it didn\'t need to propose ludicrous rule changes)?  Why doesn\'t the
USPTO get rid of its bad examiners?  The previous glory of the USPTO has
long faded as it now only examines by way of rule changes.

 

Daniel

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