Hyatt Appeal Rule N&C comment due Sept 28 2007 v 15 071001 1333 DEB

Gilbert P. Hyatt P.O. Box 81230 Las Vegas, NV 89180 By Email BPAI.Rules@uspto.gov; Fred.McKelvey@uspto.gov; Allen.MacDonald@uspto.gov Mail Stop Interference United States Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450 Re: RIN 0651-AC12, Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals, 72 Fed. Reg. 41472 (Jul 30, 2007) We wish to comment on the proposed appeal rules. We understand from a colleague who conferred with judge MacDonald last week, that submission today, October 1, 2007, would be considered timely. I. Summary of Issues The proposed “Ex Parte Appeals” rules (“proposed rules”), if promulgated, would adversely affect the appeal rights of appellants for patents, and are in significant tension with the “continuations” rule recently published as a final rule. - 1 – I.A. The PTO’s History of Flawed Examination Procedure 1 First, appeals more often than not arise out of examiner error than applicant error. Examiners are given freedom to independently decide what the law is, whether to follow the MPEP, or when to make up law or procedures out of thin air. A former Deputy Assistant Commissioner for Patent Examination policy recently observed in an April 2007 AIPLA forum in New York that examiners have no liability for excessive rejections – the Patent and Trademark Office (“PTO”) does not hold them accountable through bonus eligibility, compensation, or ...