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For reasons unknown to us, the Chairman of the BPAI

prevented the mailing of that decision. He subsequently convened a special panel formed only of management officials, namely, the Commissioner, the Deputy Commissioner, the Assistant Commissioner for Trademarks, the Chairman and the Vice-Chairman of the BPAI. All of the original panel members were replaced. To our knowledge, none of the new panel members has any special expertise or knowledge in computer technology or case law. The management panel rendered a decision opposite in result to that reached by the legally constituted original panel, making no mention of the earlier decision. These circumstances reflect an appearance of impropriety, e.g. an appellant being denied procedural due process within the U.S. Patent and Trademark office.

It is the function of the BPAI to interpret case law of reviewing courts of the United States Patent and Trademark Office and apply this case law in reaching decisions on appeals. It is the function of either the Court of Appeals for the Federal Circuit or the District Court of the District of Columbia to review the decisions of the BPAI. There is no statutory authorization for any individual or individuals other than the above-noted Courts for reviewing decisions of the BPAI.

Interference with the decision making process of any agency's authorized appellate board of review has at least the appearance of being improper. Compare 5 USC §554.

While we have referenced only a single appeal in which we believe impropriety may have occurred, there is a disturbing pattern of interference with the normal course of deciding appeals by this BPAI, either by special selection of panels or by oral threats to panel members that they will be removed from a panel if they decide "the wrong way."

The Commissioner is authorized under 35 USC §7 to "designate" the members of a panel. There is no apparent authority, statutory or otherwise, to un-designate a duly formed panel and to redesignate a completely new panel for any purpose, let alone the purpose of reaching a conclusion opposite to that of the original panel, after the original panel not only reached a decision, but signed that decision.

These matters raise questions of a very serious nature including ultra vires agency action, interference with the judicial independence of the BPAI and denial of en appellant's right to procedural due process.


We respectfully submit this memorandum to apprise you of these matters and to formally disavow even the appearance that we condone them.

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Responding to a communication signed by several Examiners-in-Chief and dated April 24, 1992, you are advised

as follows.


Policy, including legal policy based on statutory

With respect to legal policy,

and case law, which is to be applied within the Patent and
Trademark Office, is established by the Commissioner of
Patents and Trademarks, on consultation with such other
officials of the Patent and Trademark Office as the
Commissioner deems appropriate.
those other officials may be any member of the Board of Patent
Appeals and Interferences (Board), including the Deputy
Commissioner and any Assistant Commissioner appointed pursuant
to 35 U.S.c. § 3(a). In a particular case, the Commissioner
may deem it appropriate to establish legal policy for the
Patent and Trademark Office, which he believes to be consistent
with the applicable law, through entry of a decision by the

Board of Patent Appeals and Interferences.

Compare Securities

and Exchange Commission v. Chenery Corp., 332 U.S. 194, 202-203
(1947), and see Ex parte Allen, 2 USPQ2d 1425 (Bd. Pat. App. &
Int. 1987), aff'd mem., 846 F.2d 77 (Fed. Cir. 1988), and Ex
parte Hibberd, 227 USPQ 443 (Bd. Pat. App. & Int. 1985). In a
case where legal policy is being established for the Patent and
Trademark Office by entry of a decision by the Board, the
Commissioner has but one vote. To achieve an outcome which he
believes is legally correct, the Commissioner must be supported
by the vote of at least one additional member of the Board.
The statute expressly authorizes the Commissioner to
designate the members of the Board who will consider any
particular case. 35 U.S.C. § 7(b). There is no limitation
in the statute as to when the members of a panel may be
designated. Hence, at any time prior to entry of a decision
by the Board, the Commissioner may designate, or redesignate,
a panel.

The Commissioner's designation of the members to decide
any particular appeal becomes final when a decision is entered
by the Board. Prior to the time a decision is entered, and as
part of the deliberative process, the Commissioner may ask any
three Examiners-in-Chief for a draft opinion.
Commissioner believes the opinion to be legally correct, he
may designate the three Examiners-in-Chief to constitute the
panel to enter the decision of the Board. However, if the
Commissioner believes, in light of controlling law, that the

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opinion would establish incorrect policy within the Patent and Trademark Office, he may designate a panel to include himself and/or such other members of the Board as he may deem appropriate to decide the case. The panel may or may not include the members who prepared the draft opinion.

There should be no doubt that each member of the Board is, and always has been, free to vote in any particular case as his/her conscience dictates. Indeed, no member of the Board has ever been told by this Commissioner or Deputy Commissioner, or any other employee of the Patent and Trademark Office authorized to speak on behalf of this Commissioner or Deputy Commissioner, that he/she must vote in a particular case in a particular way under penalty of removal, reprisal, or any other sanction. In fact, dissents have been entered in cases in which this Commissioner and Deputy Commissioner have participated as members of the Board. However, no member of the Board has a vested right to participate in the decision of any particular case. If the Commissioner is of the opinion that one or more other members of the Board share his view, he has authority under the statute to designate a panel including himself and those other members. Any applicant dissatisfied with any decision of the Board may seek judicial review. Proceedings on judicial review govern further proceedings in the Patent and Trademark Office. If the Commissioner cannot convince a reviewing court of the correctness of his position,

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