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LAFF, WHITESEL, CONTE & SARET, LTD

LAFF, WHITESEL , CONTE & SARET, LTD . ATTORNEYS AT LAW

401 NORTH MICHIGAN AVENUE
CHICAGO, ILLINOIS 60611-4212
TELEPHONE (312) 661-2100
TELEX NO. 20-6024
FAX (312) 661-0029
FAX (312) 527-3001
Email: lwcs@lwcs.com

CHARLES A. LAFF , J. WARREN WHITESEL , ROBERT F. I. CONTE , LARRY L. SARET , MARTIN L. STERN , LOUIS ALTMAN , JOSEPH F. SCHMIDT , BARRY W. SUFRIN , MARSHALL W. SUTKER , JUDITH L. GRUBNER , JOHN T. GABRIELIDES , KEVIN C. TROCK , JAMES B. CONTE , SCOTT S. FEDER , WILLTAM A. MEUNIER , G. PETER ALBERT, JR. , MICHAEL B. ALLEN , LISA C. CHILDS , RITA A. ABBATI , JEFFREY H. CANFIELD , BRIAN J. LUM, Ph.D. , TECHNICOKL ASSISTANT , J.R. HALVORSEN , OF COUNSEL

 

November 5, 1998

Mr. Hiram A. Bernstein

Box Comments - Patents

Assistant Commissioner for Patents

Washington D.C. 20321

Re: Notice and Request for Comment Published in 1215 OG 87

Dear Mr. Bernstein:

This replies in part to the Notice and Request for Comment Published in 1215 OG 87.

Limiting the claims in a single application to an arbitrary number is like the Greek mythology of cutting off the patient's legs to make him fit a bed.

No on can predict today what the inventions will be tomorrow. To say that tomorrow's invention can be described in 6 independent claims and 40 total claims is obvious error.

Beyond the realties of this situation, the rules and regulations of the Patent and Trademark Office should be changed if this limitation on the number of claims is adopted. For example, I recently sent a U.S. application with 56 claims to be filed in the EPO where multiple dependent claims may depend upon multiple dependent claims. By doing this, the European attorney was able to reduce my 56 claims to a total 18 claims.

Another example, I am involved in prosecution where a large number of dependent claims are allowed subject to placing them in independent form. The situation in this prosecution is such that I do not believe that I dare to wait to see if the base claim will be allowed. Therefore, I wrote each dependent claim in independent form and paid an outrageous fee under 37 CFR 1.16(c). If there is a rule that dependent claims can be put into independent form at anytime despite whether or not the application is in interference, reissue, reexamination, appeal, or the like, I could risk waiting to get an allowance of the base claim before placing them in independent form.

LAFF, WHITESEL, CONTE & SARET, LTD.

Mr. Hiram A. Bernstein

November 5, 1998

Page Two

 

My recommendation is that you (1) drop any absolute limit, (2) revise the rules to allow practices that work else where in the world, and (3) set the fee under 37 CFR 1. 1 6(c) accordingly. Elsewhere in the world, this is a very effective way of reducing the number of claims.

Anything less raises issues of due process. For example, when Franklin Roosevelt was President, the Supreme Court invalidated an agriculture law (AAA) and declared it unconstitutional because the procedures were unreasonable. While the little Patent Office with its present problems can not be compared to the major depression and large agency, the principle is the same.

The only problem you really face is getting the encrusted rules and regulations of the PTO out of their rut. So far, you have done an excellent job on this score.

Sincerely,

LAFF, WHITESEL, CONTE & SARET, LTD.

 

 

J. Warren Whitesel

JWW/cd

Enclosures: Disk

 

 

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