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Comments - Gimlan113

Sent: Tuesday, April 18, 2000 11:49 AM
Subject: Proposed Rule 1.113

Sunday, April 16, 2000


ATTN: Robert W. Bahr

RE: New proposed Rule 1.113


With regard to the proposed version of 37 CFR 1.113 published 3/20/2000, this commentator respectfully submits that the proposed rule is inconsistent with 35 USC 132 (as amended by the AIPA) and as such it should be revised.

The AIPA amended subsection "(a)" of 35 USC 132, like the earlier version of the same law, gives an applicant the statutory right to "persist" both with and "without amendment" in his claim for a patent [emphasis implied by quotations]. The statute does not give the Director discretion regarding the institution of continued examination (including that requested "without amendment") because the statute mandates that "the" application "shall" be reexamined in response to the persistence of an applicant.

New subsection 132(b) does, however, give the Director discretion to establish "appropriate fees" for "the" continued examination of applications if the latter is requested by the applicant. Subsection 132(b) further mandates that the Director shall prescribe regulations to provide for "the" continued examination of applications at the request of the applicant. In both instances, the appearance of the article, "the" in the statute indicates an antecedent basis for what Congress intended by "continued examination". It is clear from the plain language of the statute that Congress meant "continued examination" to be that which the applicant may, at the applicant's discretion, request by "persist[ing] in his claim for a patent" as set forth in subsection 132(a).

Proposed Rule 1.113 abrogates this statutory right of an applicant to "persist ... without amendment" after having receiving a notice pursuant to subsection 132(a) in cases where the latter notice includes a final rejection. This is so because the proposed Rule 1.113 limits an applicant's reply after final to: (a) an "appeal" or (b) an "amendment" as specified in 1.114 or 1.116.

An "appeal" is not a request for reexamination under subsection 132(a) but rather a request under section 134 for appellate review within the auspices of the USPTO. During such an appeal to the BOPAI, the examiner may switch roles and become an advocate for unpatentability in opposition to the applicant's position whereas beforehand the examiner was supposed to act as a fair minded decision maker. The Board, in contrast, is supposed to take on the role of impartial decision maker respecting issues between the applicant and the examiner as they may pertain to findings of fact and conclusions of law. Once appeal is filed, 37 CFR 1.195 prohibits the introduction of new evidence into the record (this is relevant to 1.113) unless good and sufficient cause is shown. The intent is to encourage applicants to submit all available evidence prior to appeal so that the BOPAI can have benefit of the examiner's position regarding the totality of the record. Thus, before a Notice of Appeal is filed, it is expected that the Examiner will submit in writing, the examiner's position regarding evidence that is submitted after final.

Unlike the generic act of "persisting" with one's claim for a patent, an "amendment" is a species act that occurs only when at least one of the claims, specification, drawings and oath is changed. Any other act of "persistence" by an applicant is not an amendment because the application is not being changed. Subsection 132(a) of the statute clearly recognizes the distinction between these species of persistence because the subsection expressly indicates that an applicant may persist "without amendment". Since proposed Rule 1.113 does not allow for any non-appellate persistence after final other than by an "amendment" as specified in 1.114 or 1.116, the proposed rule is inconsistent with the statute. It is also inconsistent with case law that recognizes an applicant's right to rebut a prima facie case of unpatentability.

Here are some examples of how an applicant may persist "without amendment" after being notified by the Office of a final rejection of any claim. Suppose first that the applicant has amended his or her claims in reply to a first Office action and the examiner has thereafter provided notice pursuant to subsection 132(a) that one or more claims is "finally" rejected. This is often the first opportunity that the applicant has to learn of the Office's tentative position concerning the amended application. Traditional notions of due process suggest that the applicant should now be entitled to present his or her side of the case, at least without amendment, and the applicant is entitled to receive the examiner's written position regarding the same.

Suppose the applicant persists after final simply by submitting arguments traversing the rejection. Under the statute, the Director has no choice but to once again examine the application, and if a rejection is maintained, to so notify the applicant pursuant to subsection 132(a). Often, the Office tries to do this by issuing an 'advisory action'.

Suppose however, that after this, the applicant continues to "persist" because the opening line of subsection 132(a) gives him this right. The statute says, "Whenever, on examination, ...". There is nothing indefinite or discretionary about the word, "Whenever". It does not mean only two bites at an apple. It means at any instant in time, even one that occurs after final rejection.

Suppose that after receiving a section 132 notification the applicant persists further by submitting a Rule 132 affidavit concerning disputed issues of fact. This is a form of persistence that is sanctioned by case law. See In re Alton. The USPTO is required to reconsider the totality of the record in view of the newly submitted evidence.

Suppose the Office rules the evidence unpersuasive and gives reasons therefore as required by law. The applicant may persist even further by submitting a Rule 131 affidavit for antedating a reference. Once again, under subsection 132(a), the Director has no choice but to once again examine the application, provided of course that the applicant pays the appropriate fees as established by the Director pursuant to subsection 132(b).

Each of the above examples is a persistence yet none is an "amendment". Unfortunately the proposed version of 37 CFR 1.113 does not take into account such statutorily protected activities and therefore it is inconsistent with law. Reconsideration and correction are respectfully requested.

Respectfully submitted,

Gideon Gimlan (Reg 31,955)

[Disclaimer: The above are my own personal views as a concerned US citizen. They are not to be taken as views of any members of my firm or any clients or any other constituency.]



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