Patent Baristas

The USPTO has published in the Federal Register a notice of proposed rulemaking regarding appeals to the USPTOs Board of Patent Appeals and Interferences (BPAI).  The proposed rules are in anticipation of the flood of appeals that will result if (read: when) the new USPTO rules limiting continuation practice go into effect.  (see:  USPTO Proposes Limiting Continuations)

The new rules, if enacted, will try to box in applicants and prevent attempts to use the appeals route in lieu of filing unlimited continuing applications.  The final continuing applications rules that are expected as early as the week of August 13, 2007 (and which will have a 60 day period from the publication date until they become effective).

These are being offered to change procedures in such a way as to allow the Board to continue to resolve ex parte appeals in a timely manner, essentially by placing more of a burden on applicants to submit very concise appeals.

Among the fun new rules:

Proposed Bd.R. 41.37(o)(3) would require 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 that appellant has not previously responded to the point. 

Proposed Bd.R. 41.37(o)(4) would require, for each rejection under 35 U.S.C. 112, first paragraph, that the argument shall also specify the errors in the rejection and how the rejected claims comply with the first paragraph of 35 U.S.C. 112, including, as appropriate, how the specification and drawings, if any, (1) describe the subject matter defined by the rejected claims, (2) enable any person skilled in the art to which the invention pertains to make and use the subject matter of the rejected claims, or (3) set forth the best mode contemplated by the inventor of carrying out the claimed invention.

Proposed Bd.R. 41.37(o)(5) would require, for each rejection under 35 U.S.C. 112, second paragraph, that the argument shall also specify how the rejected claims particularly point out and distinctly claim the subject matter which appellant regards as the invention.

Proposed Bd.R. 41.37(o)(6) would require, for each rejection under 35 U.S.C. 102 (anticipation), that the argument shall also identify any specific limitations in the rejected claims which are not described (explicitly or inherently) in the prior art relied upon in support of the rejection and, therefore, why the rejected claims are patentable under 35 U.S.C. 102.

Proposed Bd.R. 41.37(o)(7) would require, for each rejection under 35 U.S.C. 103, that the argument shall (1) specify the errors in the rejection, (2) if appropriate, specify the specific limitations in the rejected claims that are not described in the prior art relied upon in support of the rejection, and (3) explain how those limitations render the claimed subject matter unobvious over the prior art. A general argument that all limitations are not described in a single prior art reference would not satisfy the requirements of this paragraph.

If you wish to comment on the proposed rules, send them to mailto:BPAI.Rules@uspto.gov or facsimile to 571–273–0042, no later than September 28, 2007.  The USPTO will make the comments available here.

See the Federal Register notice here.