\-\-\-\--Original Message\-\-\-\--\
From: Allen Hoover \[mailto:AHoover@bannerwitcoff.com\]\
Sent: Monday, September 24, 2007 11:35 AM\
To: BPAI Rules\
Subject: Comment

From: Allen E. Hoover, R.N. 37,354

This is comment concerning the Notice of proposed \"Rules of Practice

Before the Board of Patent Appeals and Interferences in Ex Parte

Appeals,\" published at 72 FR 41472-90 on July 30, 2007 (\"the
Notice\").

Please attribute these comments to myself and not to my firm or its

clients.

In general, the rules appear to be well intentioned. Some of the

proposed rule changes likely will serve the stated goal of facilitating

the Board in handling the expected increase in the number of appeals.

Some of the proposed rule changes, however, would impose significant

burdens on appellants with little or no corresponding benefit to the

Board.

The most questionable provision by far is proposed Rule 41.56, which

purports to address \"misconduct.\" This proposed rule is poorly

conceived and seriously flawed, and should be discarded.

Does this proposed rule create ethical obligations for attorneys beyond

those specified in 37 C.F.R. Chapter 10 and applicable state rules? In

other words, might an attorney be found to have committed misconduct for

activity that is appropriate and permissible under the ethical rules?

The Notice does not say, and the matter is not clear. If so, the Office

would be creating a new category of activity \-- \"ethical misconduct.\"

In any case, the proposed rule fails to provide adequate notice as to

what might constitute misconduct. Even the exemplified grounds are

unclear. For instance, \"engaging in dilatory tactics\" is supposedly an

example of misconduct. What would constitute \"engaging in dilatory

tactics\"? Essentially all deadlines in an appeal are imposed by rule.

If the appellant uses the full time permitted by rule to file a brief or

other paper, is there a risk of being held to be \"dilatory\"?
Similarly,

what would constitute \"advancing or maintaining a misleading or

frivolous request for relief\"? Some arguments are rejected by the

Board. Would any rejected argument be deemed \"misleading\" or

\"frivolous\"?

Also, the standards for purported misconduct are subjective. The Notice

states that the imposition of a sanction will be a matter \"within the

discretion of the Board.\" This is an inappropriate standard for

determining whether misconduct has occurred, especially where there is

no notice as to what actions might constitute misconduct.

Additionally, there is no intent apparently required before
\"misconduct\"

can be found. Would an attorney be strictly liable for misconduct by

\"failure to comply with an applicable rule or order\"? An attorney who

filed an appeal brief but who inadvertently omitted one of the required

appendices arguably could be held to have engaged in \"misconduct\" as

defined in this rule.

Another problem with proposed Rule 41.56 relates to the sanctions

available for misconduct. Sanction B (6) purports to allow the Board to

order a terminal disclaimer of patent term if misconduct has been found.

This sanction appears to be beyond the statutory authority of the PTO.

The PTO\'s authority to impose some of the other specified sanctions is

dubious.

In any event, the proposed sanctions appear to be redundant. The rules

already provide that an appellant who fails to timely file appropriate

papers will face dismissal of the appeal. Also, practitioners already

are subject to the PTO\'s ethical rules, and are subject to sanctions
for

violations thereof. In the rare case where a practitioner is found to

have committed some abuse of the appellate process, the matter can be

addressed via the Office of Enrollment & Discipline. See 37 C.F.R.

10.23 and related sections. (That is, unless there exists some sphere

of activity that is ethical but that nonetheless constitutes

misconduct.)

The notion of a vaguely defined, largely redundant \"misconduct\"

provision, applicable only to appeals, with no intent requirement, with

a subjective standard of imposition, and with sanctions of dubious

authority, is misguided. Proposed Rule 41.56 should be discarded in its

entirety.

The proposed requirement for a \"statement of facts\" to be presented in

the appeal brief \"without argument\" is unworkable. In most cases, at

least some of the facts underlying the appeal are disputed, and it is

not possible to state all of the facts without presenting them as

argument.

Consider, for instance, the disclosure of a reference - the Examiner may

contend that the reference discloses something, while the applicant may

disagree. In this case, it would be neither possible nor helpful to the

Board to characterize the reference\'s disclosure as \"fact.\" This

requirement will generate ancillary disputes as to whether a particular

statement of facts is, in fact, argumentative or not.

If adopted, the requirement for a statement of facts should be reworked.

Finally, some of the proposed rules would require that exhaustively

detailed indices be provided (the statement of facts must be supported

with an index to drawing numerals and page and line numbers,

means+function language would have to be supported with an index to page

an line number, office actions would have to be compiled into an

appendix, etc.). In most cases, these requirements would entail

significant additional work for the appellant with no benefit to the

Board. The Notice itself points out that the appeal brief should \"make

all arguments accessible to the judges, rather than ask them to play

archeologist with the record.\" These requirements should not be adopted

as a matter of rote for all appellants.

Allen E. Hoover

Banner & Witcoff, Ltd.

10 S. Wacker Drive

Ste. 3000

Chicago, IL 60606

312-463-5000 tel

312-463-5001 fax