Overhaul of Patent Appeal Process

The USPTO has announced a major overhaul of BPAI Patent Appeals. The look and feel of the appeal brief will be changed (e.g., it will no longer include a grouping of claims). Also, the Examiner is given more freedom in his response (e.g., she can include a new ground of rejection). The new rules will be consolidated in 37 CFR 41 and will go into effect September 13, 2004.

Link to the 62 page final order.

Update: A reader pointed out that that the the final order has some discrepencies and deserves "very close reading." For example, the description of the new Section 41.37 does not match up with the language of the new Section 41.37.

Description of the Text (p. 49963, middle column): "Merely pointing out differences in what the claims cover is not an argument as to why the claims are separately patentable."

Actual Text (p. 50006, right column): "A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim."

Although these two statements are similar -- they have key differences. The description of the rule seems to expand much further than the rule itself.