From:     CGHOLZ@oblon.com
Sent:     Wednesday, 31 March 1999 08:12
To:  Interference Rules
Cc:  AOLLIS@oblon.com; AROLLINS@oblon.com; JBOLER@oblon.com;
MCASEY@oblon.com; pwang@oblon.com; RHAHL@oblon.com; RNEIFELD@oblon.com;
TBAKER@oblon.com
Subject:  Rule 655(a)

     (1)  I think that there is a conflict in the SUPPLEMENTARY INFORMATION.  At one point
it refers to "an interlocutory order entered by a single administrative patent judge during the
interlocutory phase of an interference."  At another point it says that "a panel of the Board will
resolve the merits of an interference as a panel without deference to any interlocutory order." 
(Emphasis supplied.)  Of course, a panel of the board can enter an interlocutory order.  While the
actual rule language seems to me to permit a merits panel to reconsider an order entered by an
interlocutory panel without giving that order any deference, I think that the SUPPLEMENTARY
INFORMATION published when the rule is adopted should make it clear that that is the PTO's
intent--particularly in view of the arguably inconsistent language in the SUPPLEMENTARY
INFORMATION published to date.

     (2)  I believe that the purpose of the proposed rule change is to conform the rule to the actual
practice of the majority of the administrative patent judges.  However, the SUPPLEMENTARY
INFORMATION states that "The notice will also make practice within the Board more uniform,"
which implies that you recognize that not all of the administrative patent judges have been
following the general practice.  Under the circumstances, I think that it would be desirable to
expressly state that you intend the amended rule to be retroactive--that is, to apply to
interlocutory orders entered before the date that the amendment becomes effective.

     Charles L. Gholz
     Oblon, Spivak, McClelland, Maier & Neustadt, P.C.
     1755 Jefferson Davis Highway
     Arlington, VA  22202
     703/412-6485