Tuesday, June 10, 2008

David E. Boundy takes whack at the USPTO

Concerning the notice at


[effective date of new rules on appeals is for all appeal briefs filed, on or after, December 10, 2008]

David E. Boundy writes:

The Response to Comments repeatedly misparaphrases the comments, and then replies to the misparaphrase, rather than fairly addressing the comment.

The Board seems willing to make up facts out of thin air. Several comments pointed out that preparing a Table of Authorities using MS Word "Table of Authorities" tool takes hours. The Board says, with no identified factual basis, that it takes "10 to 15 minutes" to generate Table of Contents and Authorities with no identification of what tool generates a Table of Authorities in that amount of time.

Several comments pointed out that the Federal Circuit permits skipping page numbers in the Appendix in order to make it tractable to prepare the appendix and refer to the page numbers in the body of the brief. The Board declined to adjust the page numbering rule, and instead insists that page numbers begin at 1 and continue consecutively through the appendix. God help the appellant who needs to insert an additional page in the last few days before filing the brief.

Several people raised substantial issues under Paperwork Reduction Act and Executive order 12866. The PTO simply brushed the issues aside with no comment, except to baldly assert that the Appeal Rule imposes zero cost of compliance and zero sacrifice of rights, with no identified basis. The PTO's certification to Office of Management and Budget of "not significant" allowed the PTO to evade review under Executive Order 12866. Even on the best possible view of the facts presented in the Final Rule notice, the PTO concedes that the burden of this rule is at least above the threshold for "significant," and the PTO failed to reply to comments showing that it is likely "economically significant," the highest category of burden. This failure to reply to public comments violates both the spirit of the Executive Order and the Administrative Procedure Act.

The new Appeal Rule 41.39(b) provides "No new ground of rejection. An examiner’s answer shall not include a new ground of rejection." First of all, this is illegal - it is not a "logical outgrowth" of the rule as published in the Notice of Proposed Rule Making (recall this is one of the grounds on which Judge Cacheris preliminarily enjoined the PTO's Continuations and Claims rules in October). Second, this was the rule during the period 1998-2004. However, the Board refused to enforce the rule during the time it was in effect, Ex parte Brissette, 2002 WL 226585 (BPAI May 19, 2000); Ex parte Deacon, 2002 WL 226993 (BPAI 2000), so as a practical matter, examiners were free to throw in new grounds of rejection at any time, and applicants were constrained in their ability to reply

Since 2001, the PTO has regarded rules of procedure as expendable, to be ignored when constraining PTO action but enforceable when applicable to constrain applicants, and Due Process is something for dewey-eyed foreigners. This Notice of Final Rulemaking appears to continue the trend.

***The 271blog said -->

The new rules, which go into effect on December 10, 2008, require that appeal briefs must contain the following items:

(1) Statement of the real party in interest - an identification of the name of
the real party in interest.

(2) Statement of related cases - identify related cases by (1) application number, patent number, appeal number or interference number or (2) court docket number. The statement would encompass "all prior or pending appeals, interferences or judicial proceedings known to any inventors, any attorneys or agents who prepared or prosecuted the application on appeal and any other person who was substantively involved in the preparation or prosecution of the application on appeal."

(3) Jurisdictional statement - statement of (1) the statute under which the appeal is taken, (2) the date of the decision from which the appeal is taken, (3) the date the notice of appeal was filed, and (4) the date the appeal brief is being filed. If a notice of appeal or an appeal brief is filed after the time specified in the rules, the appellant also would have to indicate (1) the date an extension of time was requested, and (2) if known, the date the request was granted.
[EX] ‘‘The Board has jurisdiction under 35 U.S.C. 134(a). The Examiner mailed a final rejection on August 1, 2006, setting a three-month shortened statutory period for response. The time for responding to the final rejection expired on November 1, 2006. Rule 134. A notice of appeal and a request for a one-month extension of time under Rule 136(a) was filed on November 15, 2006. The time for filing an appeal brief is two months after the filing of a notice of appeal. Bd.R. 41.37(c). The time for filing an appeal brief expired on January 16, 2007 (Monday, January 15, 2007, being a Federal holiday). The appeal brief is being filed on January 16, 2007.’’
(4) Table of contents - identify the items listed in Bd.R. 41.37(e) along with a page reference where each item begins.

(5) Table of authorities - listing of (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.

(6) Reserved.

(7) Status of amendments - (1) No amendment was filed after final rejection; (2) An amendment filed [date], was not entered by the examiner; (3) An amendment filed [date], was entered by the examiner; (4) An amendment filed [date 1], was not entered by the examiner, but an amendment filed [date 2], was entered by the examiner.’’

(8) Grounds of rejection to be reviewed - requires an appeal brief to set out the grounds of rejection to be reviewed, including the claims subject to each rejection.

(9) Statement of facts - Appellant will set out in an objective and non-argumentative manner the material facts relevant to the rejections on appeal, preferably in numbered paragraphs.

A fact would be required to be supported by a reference to the page number of the Record. Where appropriate, the citation should also be to a specific line or paragraph and to a drawing figure and element number of the Record. Statements of facts should be set out in short declarative sentences, and each sentence should address a single fact.

(10) Argument - Analysis explaining, as to each rejection to be reviewed, why the appellant believes the examiner erred. 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 say so in the appeal brief so that the examiner would know that the argument is new.

When a ground of rejection applies to two or more claims, the claims may be argued separately(claims are considered by appellant as separately patentable) or as a group (claims stand or fall together). When two or more claims subject to the same ground of rejection are argued as a group, the Board may select a single claim from the group of claims that are argued together and decide the appeal on the basis of the selected claim alone. Any doubt as to whether an election has been made would be resolved against the appellant and the claims would be deemed to have been argued as a group.

Appellant would waive all arguments which could have been, but were not, addressed in the argument section of the appeal brief.

(11) Appendix - A clean copy of all claims pending in the application or reexamination proceeding on appeal. The claims section in the appendix would include all pending claims, not just those under rejection. The status of each claim would have to be indicated.

The Appendix would additionally include a (a) claims section, (b) claim support and drawing analysis section, (c) means or step plus function analysis section, (d) evidence section, and (e) related cases section (this part is a real nightmare - see attached rules below).


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