**From:** Cermak, Adam \[mailto:aCermak@ckvlaw.com\]\
**Sent:** Thursday, September 13, 2007 3:34 PM\
**To:** BPAI Rules\
**Subject:** Ex Parte Appeal Rules

Sir:

The United States Patent and Trademark Office (\"USPTO\" or \"PTO\")
published a notice in the Federal Register on 30 July 2007, \"Rules of
Practice Before the Board of Patent Appeals and Interferences in Ex
Parte Appeals\", 72 Fed. Reg. 41472 (\"Notice\"), in which the PTO
announced a set of proposed changes to certain rules governing practice
before the U.S. Board of Patent Appeals and Interferences (\"Board\" or
\"BPAI\") in *ex parte* patent appeals.  The Notice invited that
comments on the proposed rule changes be submitted by 28 September 2007.

I submit the following comments for your consideration.  It is important
to note that these comments are my own, and are not necessarily those of
Cermak Kenealy & Vaidya, LLP, its principals, employees, or clients.

(1)    In general, the proposed rules impose a heavier burden on the
Appellant to provide a more highly formatted and comprehensive Appeal
Brief *et sqq*.; however, the only mention in the Notice about about the
patent examiner\'s responsibilities is that they will be published in
the Manual of Patent Examining Procedure (\"MPEP\").  It appears that
the goal to be obtained is for the Board to refer only to the Appeal
Brief (with its extensive appendices), the Examiner\'s Answer, the
specification, drawings, and published US patent documents, and to thus
make the appellate procedure before the Board to be much more similar to
that before of an Article III reviewing court.  While this seems like a
fine endeavor, it is lopsided: patent examiner\'s would not necessarily
bear any responsibility for developing the record on appeal (which is,
after all, their primary job), while, for appellants and appellees in
litigations, both parties\' submissions to the reviewing court must
comply with strict guidelines.

(2)    There are strict page limits on the Appellant\'s briefs in the
Notice\'s proposed rules.  While this may be appropriate in the vast
number of appeals, there is no provision for permitting more pages in
exceptional circumstances.  For the occassional application where the
rejections under appeal are extremely numerous, contained in extremely
long Office Actions, or both, the Appellant is hamstrung by the page
limits to fairly and adequately address the rejections and/or bases
therefor.  In such limited circumstances, on an *ad hoc* basis, the
Appellant should be able to request leave to present arguments subject
to an expanded page limit, so that the record is fully developed for
consideration by the Board.  In such circumstances, it is the action by
the primary examiner (in levying many rejections and/or preparing
exceptionally large Office Actions) that creates the hardship on the
Appellant and the Board; relief should be available in such limited
circumstances so that the Board can consider a fully developed record.

(3)    As with the current rules, the proposed Rules permit a new
rejection in an Examiner\'s Answer, and permits the Appellant to elect
to reopen prosecution instead of proceeding with the appeal.  I have
always found this practice unfortunate: the primary examiner doesn\'t
get around to presenting the rejections s/he will stand behind until
after the Applicant has paid the fees for the Notice of Appeal and the
Appeal Brief.  Indeed, it often appears only because the Applicant paid
these fees and pushed the application into appeal that the primary
examiner levies the new rejection and confuses the record.  It seems to
me that the fees for the Notice of Appeal and the Appeal Brief have
nothing whatsoever to do with costs incurred by the PTO because of the
involvement of the Board in the application at this stage; in fact, the
Board does not even have jurisdiction at this point, and expends no time
or resources on the appeal.  The current patent examiner production
system does not provide patent examiners with additional resources for
preparing Examiner\'s Answers (they are given a single production unit
for preparing Answers, which are considered to be a \'disposal\' of the
application); so, the fees are merely the creatures of statute (35 USC
sec. 41).  While the Director has statutory authority to refund fees
paid by Applicants in certain circumstances (35 USC sec. 42), the PTO
has historically been highly reluctant to interpret its authority to
extend to the refund of fees paid by an Applicant in any but the
circumstances literally recited in the statute.  Oddly enough, however,
when a rejection is made after allowance of an application and payment
of the issue fee, the PTO will either refund the issue fee or apply it
to the fee due when the application is subsequently allowed (MPEP
1308.01).

It thus seems fundamentally unfair that a patent applicant, having
exhausted the prosecution process, elects to have a third party (the
Board) review the record, pays fees for that review, and never gets that
review because the patent examiner elects to change the rejections. 
While the Appellant has, and will continue to have, the option of moving
forward with the appeal, the incentive is to reopen prosecution: the
primary examiner has already noticed the Appellant of another rejection
not in the appeal, to which any surviving claims may be subject.  So,
the Appellant tries to further prosecution by addressing the new
rejection with the primary examiner; if it results in allowance of the
application, what has happened to the Appellant\'s appeal fees?  The
Appellant has not received the service it paid for: review by the Board.

So, it seems fair to apply fees paid by a patent applicant for a Notice
of Appeal and Appeal Brief, when the appeal is never docketed at the
BPAI, to any issue fee due in the application, or to refund those fees
to the Applicant, for the same reasons that issue fees paid by an
Applicant can be refunded or reapplied when new rejections are made by
the primary examiner after allowance of an application.

(4)    The Notice, in a couple of places, expresses concern that
Appellants could take advantage of the current rules structures to be
granted additional Patent Term Adjustment (\"PTA\"), by requesting
extensions while within the *ex parte* appeals process - this is
certainly something from which patentees should not benefit.  The Notice
thus proposes to restrict the Appellant\'s ability to request extra time
and extensions during the appeals process.  Instead, however, it would
seem equally simple to merely add a subsection to 37 CFR 1.704(c), which
defines the specific instances, identified in the Notice, as
\"Circumstances that constitute a failure of the applicant to engage in
reasonable efforts to conclude processing or examination of an
application\"; indeed, amendment of sub-rule 704(c)(9), which already
deals with delays related to post-appeal filings, would appear
expeditious.  Because 35 U.S.C. 154 appears to permit deductions from
PTA when the patent Applicant \'fails to engage in reasonable efforts\',
even in applications in which a rejection was reversed on appeal to the
BPAI, this would appear to be the solution which places the smallest
strain on the resources of the Board in considering requests and
petitions for additional time.

(5)    The Notice proposes, in Rule 41.33(d), a process for determining
when evidence should be admitted after the filing of a Notice of Appeal,
in which \"if the evidence does not overcome all the rejections, the
evidence would not be admitted.\"  This standard seems overly burdensome
on the examining corps, and instead the familiar standards under Rule
116, applied in other sub-parts of Rule 41.33, should apply.  Proposed
Rule 41.33(d) seems backwards: if the patent examiner has evalulated the
new evidence so much that s/he can determine that the evidence does not
overcome all rejections, then clearly it has been \'considered\' on the
record and the record should indicate this fact by the evidence being
formally entered.  Instead, though, the familiar standards of Rule 116
should apply as the threshold inquiry: does the evidence require
substantial new consideration?  If so, then the evidence is not entered,
[because]{.underline} it has not been fully considered, not [despite the
fact]{.underline} that it has been fully considered (under the proposed
Rule).

Respectfully submitted,

Adam Cermak

***Adam J. Cermak***\
**Cermak Kenealy & Vaidya LLP**\
[**www.CKVLaw.com**](http://www.CKVLaw.com/)\
**515 E. Braddock Road, Suite B**\
**Alexandria, Virginia  22314**\
**+1.703.778.6609 (v)**\
**+1.703.652.5101 (f)**\
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