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ANTONELLI, TERRY, STOUT & KRAUS

ANTONELLI, TERRY, STOUT & KRAUS

1300 North Seventeenth Street

Arlington, VA 22209

Tel: 703-312-6600

Fax: 703-312-6666

December 4,

1998

BY FACSIMILE and INTERNET

Mr. Hiram H. Bernstein

Box Comments - Patents

Assistant Commissioner for Patents

Washington, DC 20231

Dear Mr. Bernstein:

The following are comments concerning the Advanced Notice of Proposed Rule Making published in the Federal Register, vol. 63, No. 192, on October 5, 1998. Our comments are only being provided with respect to proposed changes we feel would adversely affect Applicants. Our lack of comments regarding other proposed changes do not necessarily mean that we agree with those changes. Our comments are as follows:

4. Limiting the number of claims in an application

(37 CFR §1.75)

The change contemplated to 37 CFR §1.75 of limiting the number of claims in an application to 40 total claims and 6 independent claims does not serve the Public nor Applicants interest.

The burden placed on an Examiner in examining an application having a large number of claims is appreciated. However, limiting the number of claims in an application is not the best solution since such a limitation would adversely affect Applicants. Particularly, such a limitation would not permit Applicants in some instances to have all features of their invention examined in a single application. Also, the limitation would in some instances prevent Applicants from having all features of their invention to be claimed and issue as a single patent with a single patent term.

The Notice states that the refusal to examine more than 40 claims or 6 independent claims in a single application is not a rejection of such claims and that such excess claims could be presented in a continuing application or another application. Due to the current 20 year patent term limitation, filing such excess claims in a continuing application would cause the excess claims to have a shorter period in which they can be enforced and such enforcement period would begin later than the claims presented in the earlier application. Further, if such excess claims are presented in another application, then the excess claims may not necessarily receive the same examination. Thus, possible challenges can be made concerning the different examinations such as, for example, the same art wasn’t considered in both applications, the Examiner raised different issues, etc.

In the Notice it was shown by statistics that less than 5% of the applications contain more than 6 independent claims or more than 40 total claims. Without additional information it is impossible to see how a relatively low number of applications can cause such extreme delays in the processing and examination of all applications. It would seem that more than 95% of the work being performed in the U.S. Patent and Trademark Office falls within the norm and that less than 5% of the work falls within an exception rarely encountered by most Examiners.

9. Imposing limits/requirements on Information

Disclosure Statement submissions (37 CFR 1.98)

The change contemplated to 37 CFR §1.98 of requiring Applicants to provide a unique description of each citation’s importance relative to each independent claim or specific dependent claim for any citation that exceeds 10 citations does not serve the Public nor Applicants interest.

The change is a step backwards to a time when such comments were required and these comments were often times construed in litigation to have a negative impact on Applicants. One of the advantages of the current embodiment of 37 CFR §1.97 and 1.98 is that Applicants are not required to provide comments concerning a reference that is either in English, translated to be in English or commented on by an English translation of a foreign Patent Office Action. Thus, the Examiner is free to make his own decision regarding a reference and Applicants are encouraged to submit such references for consideration without the fear that the form of the submission would become an issue in litigation if such occurs.

10. Refusing Information Disclosure Statement

Consideration under certain circumstances (37 CFR §1.98)

The change contemplated to 37 CFR §1.98 allowing the Examiner to deny consideration of a proper Information Disclosure Statement submission as being unduly burdensome does not serve the Public nor Applicants interest.

37 CFR §1.97 and 1.98 as currently written allows and even encourages Applicants to submit any information the Applicant deems material to the examination of the application. The change would allow the Examiner to arbitrarily decide which documents will be considered. The "unduly burdensome" standard as described in the Notice appears to be very subjective.

15. Requiring identification of broadening in a Reissue

Application (37 CFR §1.173)

The change contemplated to 37 CFR §1.173 requiring Applicants to identify all occurrences of broadening of the claimed invention in the Reissue application does not serve the Public nor Applicants interest.

The previous changes to 37 CFR §1.175 were an attempt to eliminate the need for extensive and unnecessary comments concerning a Reissue application. The contemplated change appears to be a step backwards in that it raises the possibility that the statements or lack thereof could possibly become the issue in litigation if such occurs rather than whether the broadening is appropriate under 35 USC §251.

It is respectfully requested that the above comments be considered during the rule making process. If you have any questions, please do not hesitate to contact us at the above address and telephone number or at the e-mail address of email@antonelli.com .

Very truly yours,

ANTONELLI, TERRY, STOUT & KRAUS, LLP

Carl I. Brundidge

CIB/jdc

703/312-6600

United States Patent and Trademark Office
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