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From: Raymond C. Meiers Jr [mailto:RMeiers@dickinson-wright.com]
Sent: Monday, September 17, 2007 1:48 PM
To: BPAI Rules
Subject: Comments on Proposed Rule Changes to Appeal Process


Thank you for the opportunity to submit these comments and questions to
the
proposed rule changes set forth in 72 Fed. Reg. 41472 - 41490. My
comments
and questions follow:

1. Rule 41.31(c) should be amended to grant an applicant time to file
an
appeal without late fee after the resolution of any petition

Decreasing the number of issued patents with significant term
adjustments
can be accomplished by addressing the pendency of petitions. Often, a
final rejection of an application raises issues that are appealable and
issues that are petitionable. I have prosecuted cases that required
co-filing a petition and an appeal and other cases that require
resolution
of a petition prior to appeal. I have tremendous respect for the
Office
and for the workload of Examiners, however I do not understand why
petitions take so long to resolve, especially petitions over drawing
objections and restriction requirements and other matters decided by
SPEs.
These issues should be amenable to quick resolution.

2. The rules should be amended to allow an applicant to submit
evidence
after final rejection and/or after filing the appeal brief to rebut any
statement of fact made for the first time by an Examiner

Despite the instructions set forth in MPEP 706.02, Examiners often set
forth conclusory rejections in first office actions and even final
office
actions. An applicant responds to a conclusory rejection by making a
best
guess about the rationale for the rejection. Then, the Examiner
provides a
more detailed explanation of the rejection that is often unsupported by
any
objective evidence in the record. The rules should be amended to allow
an
applicant to submit evidence after final rejection and/or after filing
the
appeal brief to rebut any statement of fact made for the first time by
an
Examiner. This is a matter of fairness as well as efficiency. A
rejection
has to be supported by evidence and a statement by an Examiner is not
evidence. An application rejected based on logic/rationale unsupported
by
objective evidence should not reach the BPAI.

Allowing an applicant to submit evidence after final rejection and/or
after
filing the appeal brief to rebut any statement of fact or conclusion
made
for the first time by an Examiner would help promote the efficiency of
the
appeal process. When compelling, objective evidence can be introduced
to
the record that refutes the logic/rationale of the rejection, the
Examiner
and Office Reviewers will be less likely to forward the application to
the
BPAI. Likewise, when an applicant can't marshall compelling, objective
evidence for the record that refutes the logic/rationale of the
rejection,
the Applicant will be less likely to pursue appeal. As it stands now,
an
applicant would be foolish not to proceed with appeal and attack the
rejection for lack of supporting evidence - often, the fees for the
notice
and for the appeal brief have already been paid.

Again, the opportunity to submit evidence should be limited only to
rebut
statements made by the Examiner for the first time.

Very Truly Yours,

Ray Meiers
Intellectual Property Attorney
Dickinson Wright PLLC
38525 Woodward Avenue, Suite 2000
Bloomfield Hills, Michigan 48304
(248) 433 - 7393
(248) 433 - 7274 Fax
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