September 28, 2007

Via Electronic Mail

<BPAI.Rules@uspto.gov>

Director

United States Patent and Trademark Office

P.O. Box 1450

Alexandria, VA 22313-1450

Mr. Dudas:

IBM Corporation Comments in response to Notice of Proposed Rule Making
"*Rules of Practice Before the Board of Patent Appeals and Interferences
in Ex Parte Appeals"*, 72 Fed. Reg. 41472 (July 30, 2007)

IBM continues to support the United States Patent and Trademark
Office\'s efforts to improve patent quality. Intellectual property
ownership is an essential driver of innovation. Decisions from the Board
of Patent Appeals and Interferences (Board) can adversely effect a
company\'s market position and intellectual property assets. Therefore,
IBM appreciates the opportunity to comment on the proposed rule package.
Although the Office\'s goal of enabling the Board to process appeals in
a timely manner is laudable, the Office needs to strike the appropriate
balance between improving the Board\'s decision-making efficiency and
the burden on the appellant in achieving this goal. Thus, we offer the
following comments, as well as alternatives to the proposed rule
changes.

**[GENERAL COMMENTS]{.underline}**

Even though we agree that the commitment to patent quality is a shared
responsibility, we believe that some of the proposed rules are of
questionable benefit and impose substantial, unjustified burdens on
appellants. For example, appeal briefs will be lengthier and more
complicated to construct due to the additional content, requiring
increased preparation time and internal administrative review, yet some
of the proposals do not seem tailored to assisting the Board achieve its
responsibilities. Additionally, due to the extra information required,
the proposed rule changes may result in more noncompliant briefs that
will require correction and resubmission by the appellant, thus
increasing the examiner\'s workload.

Furthermore, in light of the recent rule changes regarding continuation
applications and claims practice, applications that would normally have
resulted in an RCE will now most likely be appealed. We note that the
Notice at page 41484 states that the impact of the additional time
burden imposed by the proposed rules is believed to be de minimus
compared to the perceived benefit of reduced pendency. However, no
information has been provided to show how this conclusion was
determined.

Although the Federal Register cited statistics indicating that the
number of ex parte appeals is anticipated to increase (Notice at 41472),
the Office should provide further statistics regarding appeals practice,
including statistics by Technology Center Work Group as to the
percentage of appeals that are reopened after the appellant files an
appeal brief. We have noticed that after the appellant files an appeal
brief, and has incurred the expense of the Notice of Appeal fee and
appeal brief fee, as well as the preparation time of the appeal brief,
oftentimes the examiner allows one or more claims, apparently the result
of an appeal conference. This is inherently unfair to the appellant
because in many of these instances, the examiner should have reached the
same conclusion earlier in the examination process, before the appellant
incurred the expenses associated with the full appeal.

Therefore, we propose alternately that when the appellant files a Notice
of Appeal and pays the corresponding fee, if the examiner has not cited
any new art in the final rejection, a review of the pending claims
should be conducted by the SPE based on the Remarks filed in the prior
Amendment without having to file an appeal brief or pre-appeal document.
This is both fair to the appellant in view of the Notice of Appeal fee
which has been paid, as well as advantageous to the Office as a
reduction of the total number of appeals that are sent to the Board.

As another alternative, upon filing the Notice of Appeal, the appellant
could specify one claim which the appellant wishes to have reviewed by
the SPE before appellant files an appeal brief. If the examiner allows a
claim upon filing a Notice of Appeal, then the appellant may voluntarily
settle for this claim and forego the appeal brief fee and preparation
time. However, the applicant would still have the option of filing the
appeal.

The current Pre-Appeal process is only suited for the review of clear
errors by the examiner, and therefore does not solve the problem when
some discretion is required in differentiating the claims from the prior
art. However, in IBM's new proposal, the examiner's SPE could exercise
discretion in allowing a claim over the prior art.

**SPECIFIC RULE COMMENTS**

**Rule 41.37(g)** - Statement of Related Cases

*The proposed rule requires a continuing obligation to identify all
appeals, interferences, or judicial proceedings known to appellant, its
legal representative, or any assignee, that are related to, directly
affect, or would be directly affected by, or have a bearing on the
Board's decision.*

Although this rule is virtually identical to language currently in
effect, we believe that it is overbroad, and would place an undue burden
on appellants. It is unclear if the obligation extends to applications
in the same technology, applications of others known to a legal
representative, appellant's own related inventions (those that would be
cited in the application itself), or just the application under appeal.
Further, it is unclear what judicial proceedings are included. Is it all
judicial proceedings, both decided and pending, that include an issue
similar to the one being appealed, or some subset? Additionally, "known
to appellant, its legal representative, or any assignee" can cover a
very large number of people. Should the knowledge of every single
attorney and agent included in that phrase be checked, on a continuing
basis, for every appeal brief? For large entities like IBM, that would
be virtually impossible Therefore, we request that the USPTO narrow the
boundaries and provide further clarification with respect to the
information required, so that compliance with this rule is feasible for
all appellants.

**Rule 41.37(j)** -- Table of Authorities (TOA)

*The proposed rule provides, in part, that the TOA list (1) court and
administrative decisions (alphabetically arranged), (2) statutes, and
(3) other authorities, along with a reference to the pages of the appeal
brief where each authority is cited.*

In the non-patent appeal brief, any cases cited are identified in the
introductory part of the brief. However, patent appeals to the Board do
not often turn on legal issues, and so we do not believe that there is
any real benefit to a TOA in an appeal brief. Moreover, it is hard to
envision situations where the Board needs to find the actual page in an
appeal brief where a particular case is cited. Therefore, we feel this
requirement is an unjustified burden on the appellant.

**Rule 41.37(n)** - Statement of Facts

*The proposed rule provides for a statement setting out material facts
relevant to the rejections on appeal, supported by specific references
to pages, lines, or drawing elements.*

We generally concur with this rule's concept of requiring appellants to
provide specific reference support such that the panel members are not
searching the record themselves. However, the Explanation of this rule
contains an example with respect to a 103 rejection (see 41476 top left
column) with which we disagree. The discussion states that for such a
rejection, the facts should address "the level of skill in the art."
Although the \"level of skill in the art\" is a bona fide issue in a
rejection for obviousness under section 103, it is not a clear, factual
concept, and thus there is a lack of clear evidence to support it.
Instead, it is a matter of opinion, and as such would require an expert
opinion, which is too difficult and expensive an undertaking for an ex
parte appeal. We recommend deletion of the phrase "and the level of
skill in the art" from the Explanation.

**Rule 41.37(o)** - Argument

*The proposed rule provides, in part, that the argument include an
analysis explaining, as to each rejection to be reviewed, why the
appellant believes the examiner erred as to each rejection to be
reviewed. The analysis would have to address all points made by the
examiner with which the appellant disagrees. Where an argument has
previously been presented to the examiner, the analysis would have to
identify where any argument being made to the Board was made in the
first instance to the examiner. Where an argument has not previously
been made to the examiner, an appellant would be required to indicate
that the argument is new. Examiner findings or conclusions not
challenged are presumed to be correct.*

While we agree with the objective of making it clear on appeal the
specific rejection and points being considered, the appellant should not
be expected to parse the Office Action to determine what it contains.
While some Office Actions are very clear, concise, and organized,
unfortunately not all are, and with muddled reasoning it is difficult to
determine exactly what points are being raised. In such a situation,
failure to challenge a conclusion should not result in an adverse
presumption. If this Rule were to take effect, a balanced approach would
require the examiner to state findings and conclusions on a clear,
point-by-point basis with appropriate numbered titles or headings. Under
such a system, an appellant would more easily be able to address each
point made by the examiner.

With respect to identifying new versus previously made arguments, while
there may be some benefit to highlighting new arguments for the
examiner's attention, it is often difficult to determine whether an
argument is completely "new" or not. During prosecution, arguments often
evolve such that they are merely similar, or slightly different. We
therefore request clarification. What is the advantage of making this
distinction? How would "previous" and "new" arguments be treated
differently for purposes of the appeal? Any potential benefit of this
requirement appears to be outweighed by the substantial costs it would
impose on appellants.

Given that the issue of parsing the Office Action can be resolved, we
also agree for the sake of efficiency that any finding or conclusion not
challenged is presumed to be correct *for the purposes of the Appeal*;
however the language of the Rule does not contain the last part of that
phrase, so we recommend "for the purposes of the Appeal" to be added to
that phrase so that it is clear there is no broad waiver of arguments
for later proceedings.

**Rule 41.37(o)(2)** - Arguments Considered

*The proposed rule provides, in part, that the Board will only consider
arguments that (1) are presented in the argument section of the appeal
brief and (2) address claims set out in the claim support section of the
appendix. Appellant would waive all other arguments.*

The proposed language that the \"\[a\]ppellant waives all other
arguments\" is troublesome. Although the explanation section of the
Rules gives examples that arguments/affidavits that were part of the
record but not brought forth on appeal will not be considered by the
Board (see 41477), the language in the Rule is too broad. It is unclear
if appellant waives all other arguments entirely, for any later
proceeding, or some lesser degree of waiver. We recommend a
clarification of the last sentence to read as follows: "Appellant waives
all other arguments on the record for the purposes of the Appeal."

**Rule 41.37(o)(3)** - Format of Argument

*The proposed rule provides, in part, that when responding to points
made in the final rejection, the appeal brief shall specifically (1)
identify each point made by the examiner and (2) indicate where
appellant previously responded to each point or state that appellant has
not previously responded to the point. In supporting any argument, the
appellant shall refer to a page and, where appropriate a line, in the
evidence section of the appendix, specification, drawings (if any), U.S.
patents, and published U.S. applications.*

Similar to our response in 41.37(o) above, we are concerned that this
rule would require the appellant to parse the examiner's final
rejection, which is difficult in those cases where they contain poorly
organized arguments. Requiring the examiners to use this format as well
would make compliance with this rule more feasible. We are also
concerned with appellant's ability (or inability) to properly identify
whether each point had been completely, partially, or not responded to.
We request clarification; how would this information be used, and to
what benefit?

**Rule 41.37(q)** - Claim Support Section

*The proposed rule provides, in part, that the appeal brief contain a
"claim support section\'\' of the appendix. For each claim argued
separately, this section would consist of an annotated copy of the claim
indicating in bold face between braces ({{time} ) after each limitation
where, by page and line numbers, the limitation is described in the
specification as filed.*

IBM fully supports this proposed rule change. We note that although
there is no explicit requirement to cite every instance of support, we
suggest a clarification to make it clear that this is not required.
Otherwise, it could be argued in a later district court action or in
later prosecution that the appellant's failure to re-read the entire
specification and identify all recitations of claim support could be an
admission that there is no other claim support

In general, the citation of support for claims should be required not
only for appeal briefs, it should be required for amendments as well.
When a new or amended claim in a patent application includes new
substantive claim limitations, the appellant should be required to
explicitly identify the parts of the specification that describe the
introduced claim limitations. This alternate proposal saves the examiner
time in looking for the claim language support and should benefit patent
owners, courts and the public by clarifying what the claim language is
intended to mean.

**Rule 41.37(s)** - Means or Step + Function Analysis Section

*The proposed rule provides, in part, that the appeal brief contain a
"means or step plus function analysis section\'\' in the appendix. The
means or step plus function analysis section would include each claim
argued separately that contains a limitation that appellant regards as a
means or step plus function limitation in the form permitted by the
sixth paragraph of 35 U.S.C. 112. If the appealed claims do not contain
any means or step plus function limitations, the section would indicate
such.*

IBM supports this Rule, and further recommends that the phrase "even if
not stated in means for, or step for language" be inserted after "35
U.S.C. 112" in order to reinforce the concept that the Rule applies to
all claim elements which are in different formats but are defined
substantially by function, and require reference to the specification to
interpret. Examples of these different formats include \"program
instructions for \_\_\_\", \"component for \_\_\_\", or \"module for
\_\_\_\".

**Rule 41.37(t)** - Evidence

*The proposed rule provides, in part, that the appeal brief contain an
\"evidence section\'\' in the appendix. The evidence section and any
supplemental appendix filed, as well as the specification, any drawings,
and any cited U.S. patents and published U.S. applications, would
constitute the record upon which the appeal would be decided. The
evidence section would include (1) table of contents, (2) the Office
action setting out the rejection on appeal (including any Office action
that may be incorporated by reference), (3) all evidence (except the
specification, any drawings, U.S. patents and published U.S.
applications) upon which the examiner relied in support of the rejection
on appeal, (4) the relevant portion of papers filed by the appellant
during prosecution before the examiner which show that an argument being
made on appeal was made in the first instance to the examiner, (5)
affidavits or declarations upon which the appellant relied before the
examiner, and (6) other evidence upon which the appellants relied before
the examiner.*

While appellants can comply with this rule, it is an additional
administrative burden, and we point out that the examiner and the Office
in general already has much of this information easily accessible via
PAIR. We recommend that the appellant be allowed to comply by giving a
reference to PAIR, when applicable.

**Rule 41.37(v)(5)** - Length of Appeal Brief

*A 25 page limit is proposed, which would not including various
statements and the appendix.*

Although this may be a reasonable page limit in general, it would be
very helpful if the Office could indicate the average length of an
appeal brief, and how many have exceeded the proposed limit. In very
complex cases, if 25 pages is not sufficient, it would be useful to have
a procedure for requesting and obtaining approval for extra pages.

**Rule 41.41(g)** - Argument (Reply Brief)

*The proposed rule provides, in part, that arguments in the reply brief
would be limited to responding to points made in the examiner\'s answer.
No general restatement of the case would be permitted in a reply brief.
An argument which could have been, but which was not made in the appeal
brief could not be made in the reply brief.*

While we have no objections to the rule as stated, the Explanation
section contains a phrase "\[a\]n argument which could have been, but
which was not, made in the appeal brief cannot be made in the reply
brief" (see 41480 bottom left). We are concerned that this may give rise
to some form of waiver of rights to present an argument in a later
forum, so we recommend that the phrase "could have been, but which" be
deleted from the Explanation section for this rule.

Conclusion

While improving the quality of the examination process will ultimately
benefit everyone, we encourage the USPTO to adopt rules that advance the
mutual interest of the Office as well as applicants. IBM looks forward
to continuing to work with the Office in furtherance of its goal of
processing ex parte appeals in a timely manner.

Respectfully submitted,

Manny W. Schecter

Associate General Counsel

Intellectual Property Law

IBM Corporation

schecter@us.ibm.com

Voice: 914-765-4260

Fax: 914-765-4290

Lynne D. Anderson

Sr. Program Manager

U.S. Patent and Trademark Office Liaison

IBM Corporation

Washington IP Law Dept.

lynnea@us.ibm.com

Voice: 703-299-1455

Fax: 703-299-1475