United States Patent and Trademark Office OG Notices: 24 January 2006

                            DEPARTMENT OF COMMERCE
                          Patent and Trademark Office
                                 37 CFR Part 1
                           [Docket No.: 2005-P-067]
                                 RIN 0651-AB94

                         Changes to Practice for the
                 Examination of Claims in Patent Applications

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rule making.

SUMMARY: The United States Patent and Trademark Office (Office) is
proposing to revise the rules of practice relating the examination of
claims in patent applications. The Office is proposing to focus its
initial examination on the claims designated by the applicant as
representative claims. The representative claims will be all of the
independent claims and only the dependent claims that are expressly
designated by the applicant for initial examination. The Office is also
proposing that if an application contains more than ten independent
claims (a rare occurrence), or if the applicant wishes to have initial
examination of more than ten representative claims, then the applicant
must provide an examination support document that covers all of the
independent claims and the dependent claims designated for initial
examination. The changes proposed in this notice will allow the Office
to do a better, more thorough and reliable examination since the number
of claims receiving initial examination will be at a level which can be
more effectively and efficiently evaluated by an examiner.
   Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before May 3, 2006. No public hearing
will be held.

ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to AB94Comments@uspto.gov. Comments may also be
submitted by mail addressed to: Mail Stop Comments - Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-
1450, or by facsimile to (571) 273-7735, marked to the attention of
Robert A. Clarke. Although comments may be submitted by mail or
facsimile, the Office prefers to receive comments via the Internet. If
comments are submitted by mail, the Office prefers that the comments be
submitted on a DOS formatted 3 1/2 inch disk accompanied by a paper
copy.
   Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site http://www.regulations.gov for additional
instructions on providing comments via the Federal eRulemaking Portal.
   The comments will be available for public inspection at the Office
of the Commissioner for Patents, located in Madison East, Tenth Floor,
600 Dulany Street, Alexandria, Virginia, and will be available via the
Office Internet Web site address: http://www.uspto.gov. Because comments
will be made available for public inspection, information that is not
desired to be made public, such as an address or phone number, should
not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Robert A. Clarke, Deputy Director,
Office of Patent Legal Administration, Office of the Deputy
Commissioner for Patent Examination Policy, by telephone at (571) 272-
7735, by mail addressed to: Mail Stop Comments - Patents, Commissioner
for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450, or by
facsimile to (571) 273-7735, marked to the attention of Robert A.
Clarke, or preferably via electronic mail message addressed to:
robert.clarke@uspto.gov.

SUPPLEMENTARY INFORMATION: The Office's current practice for
examination of claims in patent applications provides for an initial
examination of each and every claim, independent and dependent, in
every Office action on the merits of the application. The Office's
current practice for examination of claims in patent applications is
less efficient than it could be because it requires an initial
patentability examination of every claim in an application,
notwithstanding that this effort is wasted when the patentability of
the dependent claims stand or fall together with the independent claim
from which they directly or indirectly depend. Thus, the Office is
proposing to delay the patentability examination of most dependent
claims until the application is otherwise in condition for allowance.
The Office, however, will examine every claim in an application before
issuing a patent on the application.
   Both the Board of Patent Appeals and Interferences (BPAI) and the
courts commonly employ some form of using representative claims to
focus and manage issues in a case. The BPAI's representative claim
practice provides that if the applicant desires the BPAI to consider
the patentability of a claim separately from the other claims also
subject to the same ground of rejection, the applicant must include a
subheading in the arguments section of the appeal brief setting out an
argument for the separate patentability of the claim. See 37 CFR
41.37(c)(1)(vii). If there are multiple claims subject to the same
ground of rejection and the applicant argues the patentability of the
claims as a group, the BPAI will select a claim from the group of
claims and decide the appeal with respect to that group of claims on
the basis of the selected claim alone. See id.
   The Office plans to apply a similar practice to the BPAI's
representative claim practice to the examination of patent
applications. Specifically, the Office will provide an initial
patentability examination to the claims designated by the applicant as
representative claims. The representative claims will be all of the
independent claims and the dependent claims that are expressly
designated by the applicant for initial examination. Thus, each
independent claim and each dependent claim that is designated for
initial examination will be treated as a representative claim for
examination purposes. The examination of the dependent claims that are
not designated for initial examination will be deferred until the
application is otherwise in condition for allowance. Specifically,
applicants will be required to assist the Office in eliminating
unnecessary effort by permitting the Office to provide an initial
examination to a more focused set of claims; that is, only to the
independent and designated dependent claims. The Office will continue
its practice of withdrawing from further consideration claims that are
drawn to a non-elected invention.
   The Office previously requested comments on a proposal to limit the
number of total and independent claims that would be examined in an
application. See Changes to Implement the Patent Business Goals, 63 FR
53497, 53506-08 (Oct. 5, 1998), 1215 Off. Gaz. Pat. Office 87, 95-97
(Oct. 27, 1998). The Office, however, ultimately decided not to proceed
with a proposed change to 37 CFR 1.75 to limit the number of total and
independent claims that would be examined in an application. See
Changes to Implement the Patent Business Goals, 64 FR 53771, 53774-75
(Oct. 4, 1999), 1228 Off. Gaz. Pat. Office 15, 17-18 (Nov. 2, 1999).
Nevertheless, applications which contain a large number of claims
continue to absorb an inordinate amount of patent examining resources,
as they are extremely difficult to properly process and examine. The
Office is now proposing changes to its practice for examination of
claims in patent applications that avoids placing limits on the number
of total or independent claims that may be presented for examination in
an application, but does share with an applicant who presents more than
a sufficiently limited number of claims for simultaneous examination
the burden so imposed. Specifically, an applicant who declines to
designate fewer than ten representative claims for initial examination
will be required to assist the Office with this more extensive
examination by providing an examination support document covering all
of the claims designated for initial examination.
   The Office is proposing the following changes to the rules of
practice in title 37 of the Code of Federal Regulations (CFR) for the
examination of claims in an application: First, the Office will give an
initial examination only to the representative claims, namely, all of
the independent claims and only the dependent claims that are expressly
designated for initial examination. Second, if the number of
representative claims is greater than ten, the Office will require the
applicant to share the burden of examining the application by
submitting an examination support document covering all of the
representative claims.
   The Office's Patent Application Locating and Monitoring (PALM)
records show that the Office has received 216,327 nonprovisional
applications since January 1, 2005 (based upon PALM records as of
October 13, 2005). The Office's PALM records show that only 2,522 (866
small entity), or about 1.2 percent of all nonprovisional applications,
included more than ten independent claims. Thus, this proposal will
allow for the examination of every independent claim in 98.8 percent of
the applications filed since January 1, 2005, without any additional
effort by the applicant.

   The Office conducted a random survey of five hundred applications
in which an appeal brief was filed in fiscal year 2004. Only nine
applications out of these five-hundred applications (1.8 percent) had
more than ten representative claims. In addition, the average and
median numbers of representative claims in these five hundred appeals
were 2.73 and 2, respectively.
   The Office currently has a procedure for requesting accelerated
examination under which an application will be taken out of turn for
examination if the applicant files a petition to make special and
(inter alia):

   Submits a statement(s) that a pre-examination search was made,
listing the field of search by class and subclass, publication,
Chemical Abstracts, foreign patents, etc. The pre-examination search
must be directed to the invention as claimed in the application for
which special status is requested. A search made by a foreign patent
office satisfies this requirement if the claims in the corresponding
foreign application are of the same or similar scope to the claims
in the U.S. application for which special status is requested;
   Submits one copy each of the references deemed most closely
related to the subject matter encompassed by the claims if said
references are not already of record; and
   Submits a detailed discussion of the references, which
discussion points out, with the particularity required by 37 CFR
1.111(b) and (c), how the claimed subject matter is patentable over
the references.

   See Manual of Patent Examining Procedure Sec. 708.02 (8th ed.
2001) (Rev. 3, August 2005) (MPEP). Based upon the Office's PALM
records, it appears that about 1,225 applicants have filed a petition
to make special under this accelerated examination procedure to date in
fiscal year 2005. The proposed examination support document
requirements are similar to the requirements set forth in MPEP Sec.
708.02 for having an application taken out of turn for examination
under this accelerated examination procedure.
   These changes will mean faster more effective examination for the
typical applicant without any additional work on the applicant's part,
but a small minority of applicants who place an extensive burden on the
Office's ability to effectively examine applications will be required
to assist the Office in handling the burden they place on the Office.

Discussion of Specific Rules

   Title 37 of the Code of Federal Regulations, Part 1, is proposed to
be amended as follows:

   Section 1.75: Section 1.75(b) (introductory text) is proposed to be
amended to set forth the provisions concerning dependent claims that
are currently in Sec. 1.75(c), namely, that "[o]ne or more claims may
be presented in dependent form, referring back to and further limiting
another claim or claims in the same application," and that "[c]laims
in dependent form shall be construed to include all the limitations of
the claim incorporated by reference into the dependent claim." Section
1.75(b) (introductory text) is further proposed to be amended to
provide that unless a dependent claim has been designated for initial
examination prior to the application being taken up for examination,
the examination of such dependent claim may be held in abeyance until
the application is otherwise in condition for allowance. See also
proposed Sec. 1.104(b). As discussed previously, the Office will
provide an initial patentability examination to each of the
representative claims. If the applicant fails to designate any
dependent claim for initial examination, the Office will initially
examine only the independent claims. Thus, the applicant must expressly
designate which (if any) dependent claims are to be given initial
examination, even if there are ten or fewer total (independent and
dependent) claims in the application. Section 1.75(b) (introductory
text) is further proposed to be amended to provide that the mere
presentation of a dependent claim in an application is not a
designation of the dependent claim for initial examination. An
applicant may designate one or more dependent claims for initial
examination in the transmittal letter or in a separate paper, but the
mere inclusion of a dependent claim in an application will not be
considered a designation of the dependent claim for initial examination.
   Section 1.75(b)(1) is proposed to provide that an applicant must
submit an examination support document in compliance with Sec. 1.261
that covers each representative claim if either: (1) The application
contains, or is amended to contain, more than ten independent claims;
or (2) the number of representative claims (i.e., the independent
claims plus the number of dependent claims designated for initial
examination) is greater than ten. Thus, the applicant may designate a
number of dependent claims up to ten minus the number of independent
claims in the application to be given initial examination without
filing an examination support document under proposed Sec. 1.261. For
example, if an application contains three independent claims and a
total of twenty claims, the applicant may designate up to seven (ten
minus three) dependent claims for initial examination without filing an
examination support document under Sec. 1.261.
   Proposed Sec. 1.75(b)(1) further provides that a dependent claim
(including a multiple dependent claim) designated for examination must
depend only from a claim or claims that are also designated for
examination. Thus, if dependent claim 3 depends upon dependent claim 2,
which in turn depends upon independent claim 1, the applicant cannot
designate claim 3 for initial examination without also designating
claim 2 for initial examination. Likewise, if multiple dependent claim
4 depends (in the alternative) upon dependent claim 3 and dependent
claim 2, and claim 3 and claim 2 each depend upon independent claim 1,
the applicant cannot designate claim 4 for initial examination without
also designating claim 3 and claim 2 for initial examination.
   Proposed Sec. 1.75(b)(2) provides for claims in dependent form
that are effectively independent claims. Proposed Sec. 1.75(b)(2)
provides that a claim that refers to another claim but does not
incorporate by reference all of the limitations of the claim to which
such claim refers will be treated as an independent claim for fee
calculation purposes under Sec. 1.16 (or Sec. 1.492) and for purposes
of Sec. 1.75(b)(1). The Office must treat such claims as independent
claims because 35 U.S.C. 112, para. 4, provides (inter alia) that a
dependent "shall be construed to incorporate by reference all the
limitations of the claim to which it refers." See 35 U.S.C. 112, para. 4.
Examples of claims that appear to be a dependent claim but are in
actuality an independent claim that references another claim in short-
hand form without incorporating by reference all the limitations of the
claim to which it refers are included in the applications at issue in
the following decisions: In re Thorpe, 777 F.2d 695, 696, 227 USPQ 964,
965 (Fed. Cir. 1985) ("product by process" claim 44); In re Kuehl,
475 F.2d 658, 659, 177 USPQ 250, 251 (CCPA 1973) (claim 6); and Ex
parte Rao, 1995 WL 1747720, *1 (BPAI 1998) (claim 8). Proposed Sec.
1.75(b)(2) also provides that a claim that refers to a claim of a
different statutory class of invention will be treated as an
independent claim for fee calculation purposes under Sec. 1.16 (or
Sec. 1.492) and for purposes of paragraph (b)(1) of this section.
Examples of such claims are included in the applications at issue in
the following decisions: Thorpe, 777 F.2d at 696, 227 USPQ at 965
("product by process" claim 44); Ex parte Porter,
25 USPQ2d 1144, 1145 (BPAI 1992) (claim 6); and Ex parte Blattner, 2
USPQ2d 2047, 2047-48 (BPAI 1987) (claim 14).
   Section 1.75(b)(3) is proposed to provide that the applicant will
be notified if an application contains or is amended to contain more
than ten independent claims, or the number of independent claims plus
the number of dependent claims designated for initial examination is
greater than ten, but an examination support document under Sec. 1.261
has been omitted (proposed Sec. 1.75(b)(3)). Proposed Sec. 1.75(b)(3)
further provides that if prosecution of the application is not closed
and it appears that omission was inadvertent, the notice will set a
one-month time period that is not extendable under Sec. 1.136(a)
within which to avoid abandonment of the application the applicant
must: (1) File an examination support document in compliance with Sec.
1.261; (2) cancel the requisite number of independent claims and
rescind the designation for initial examination of the requisite number
of dependent claims that necessitate an examination support document in
compliance with Sec. 1.261; or (3) submit a suggested requirement for
restriction accompanied by an election without traverse of an invention
to which there are drawn fewer than ten independent claims and fewer
than the residual number of designated dependent claims. The phrase
"an application in which prosecution is not closed" means an
application that is not under appeal, and in which the last Office
action on the merits is not a final action (Sec. 1.113), a notice of
allowance (Sec. 1.311), or an action that otherwise closes prosecution
in the application. The submission of additional claims after close of
prosecution would be treated under the provisions of Secs. 1.116,
1.312, 41.33 or 41.110. Due to the increase in patent pendency that
would result from the routine granting of extensions in these
situations, the Office is limiting extensions of this one-month time
period to those for which there is sufficient cause (Sec. 1.136(b)).
   Section 1.75(b)(4) is proposed to provide for the situation in
which: (1) A nonprovisional application contains at least one claim
that is patentably indistinct from at least one claim in one or more
other nonprovisional applications or patents; and (2) the one or more
other nonprovisional applications or patents either name at least one
inventor in common and are owned by the same person as the
nonprovisional application, or are subject to an obligation of
assignment to the same person as the first nonprovisional application;
and (3) the at least one patentably indistinct claim has support under
35 U.S.C. 112, para. 1, in the earliest of such one or more other
nonprovisional applications or patents. Proposed Sec. 1.75(b)(4)
provides that in this situation, the Office may require elimination of
the patentably indistinct claims from all but one of the nonprovisional
applications. In addition, proposed Sec. 1.75(b)(4) provides that if
the patentably indistinct claims are not eliminated from all but one of
the nonprovisional applications, the Office will treat the independent
claims and the dependent claims designated for initial examination in
the first nonprovisional application and in each of such other
nonprovisional applications or patents as present in each of the
nonprovisional applications for purposes of Sec. 1.75(b)(1). That is,
if the conditions specified in proposed Sec. 1.75(b)(4)) are present,
the Office would treat each such nonprovisional application as having
the total of all of the representative claims for purposes of
determining whether an examination support document is required by
proposed Sec. 1.75(b)(1) (but not for purposes of calculating the
excess claims fee due in each such nonprovisional application).
   If two or more inventions are claimed in an application, the
examiner may, if appropriate, still require that the application be
restricted to a single invention. The criteria for making such a
restriction requirement would remain the same. Any restriction
requirement would be based on all the claims pending in the
application, and not just the claims designated for initial
examination. If the examiner makes a restriction requirement and
applicant's election results in representative claims being withdrawn
from consideration, applicant may designate additional representative
claims for initial examination without filing an examination support
document under proposed Sec. 1.261 so long as the total number of
representative claims drawn to the elected invention does not exceed
ten. Any additional dependent claims designated for initial examination
must be drawn to the elected invention. The designation of the
additional dependent claims must be made in the reply to the
restriction requirement or as permitted by the examiner.
   The Office is also requesting comments on how claims written in the
alternative form, such as claims in an alternative form permitted by Ex
parte Markush, 1925 Dec. Comm'r Pat. 126 (1924), should be counted for
purposes of proposed Sec. 1.75(b)(1). Should the Office simply count
each alternative in the claim as a separate claim for purposes of Sec.
1.75(b)(1)? Should the Office count each alternative in the claim as a
separate claim for purposes of Sec. 1.75(b)(1) unless the applicant
shows that each alternative in the claim includes a common core
structure and common core property or activity, in which the common
core structure constitutes a structurally distinctive portion in view
of existing prior art and is essential to the common property or
activity (see MPEP 1850)?
   Section 1.75(c) is proposed to be amended to provide only for
multiple dependent claims (with dependent claims being provided for in
Sec. 1.75(b)), and to further provide that multiple dependent claims
and claims depending from a multiple dependent claim will be considered
to be that number of claims to which direct reference is made in the
multiple dependent claim for purposes of Sec. 1.75(b)(1).

   Section 1.104: Section 1.104(a)(1) is proposed to be amended to
change "invention as claimed" to "invention as claimed in the
independent and designated dependent claims" for consistency with the
change to examination practice. The Office plans to generally delay the
patentability examination of any dependent claim that was not
designated for initial examination until the application is otherwise
in condition for allowance.
   Section 1.104(b) is proposed to be amended to add that "[t]he
examination of a dependent claim that has not been designated for
initial examination may be held in abeyance until the application is
otherwise in condition for allowance."
   Section 1.104(c) is proposed to be amended to change "[i]f the
invention is not considered, or not considered patentable as claimed"
to "[i]f the invention claimed in the independent and designated
dependent claims is not considered patentable" for consistency with
the proposed change to examination practice.

   Section 1.105: Section 1.105(a)(1) is proposed to be amended to
provide that an applicant may be required to set forth where (by page
and line or paragraph number) the specification of the application, or
any application the benefit of whose filing date is sought under title
35, United States Code, provides written description support for the
invention as defined in the claims (independent or dependent), and of
manner and process of making and using it, in such full, clear,
concise, and exact terms as to enable any person skilled in the art to
which it pertains, or with which it is most nearly connected, to make
and use the invention, under 35 U.S.C. 112, para. 1. Therefore, in
situations in which it is not readily apparent where the specification of
the application, or an application for which a benefit is claimed,
provides written description support under 35 U.S.C. 112, para. 1,
for a claim or a limitation of a claim, the examiner may require the
applicant to provide such information. The Office considers this authority
to be inherent under the patent statute and existing rules (including
current Sec. 1.105), but is proposing to amend Sec. 1.105 to make the
authority explicit. See MPEP 2163.04.

   Section 1.117: The Consolidated Appropriations Act 2005
(Consolidated Appropriations Act), provides that 35 U.S.C. 41(a), (b),
and (d) shall be administered in a manner that revises patent
application fees (35 U.S.C. 41(a)) and patent maintenance fees (35
U.S.C. 41(b)), and provides for a separate filing fee (35 U.S.C.
41(a)), search fee (35 U.S.C. 41(d)(1)), and examination fee (35 U.S.C.
41(a)(3)) during fiscal years 2005 and 2006. See Pub. L. 108-447, 118
Stat. 2809 (2004). The Consolidated Appropriations Act also provides
that the Office may, by regulation, provide for a refund of any part of
the excess claim fee specified in 35 U.S.C. 41(a)(2) for any claim that
is canceled before an examination on the merits has been made of the
application under 35 U.S.C. 131. See 35 U.S.C. 41(a)(2) (as
administered during fiscal years 2005 and 2006 pursuant to the
Consolidated Appropriations Act). Section 1.117 is proposed to be added
to implement this provision of the Consolidated Appropriations Act.
Proposed Sec. 1.117(a) provides that if an amendment canceling a claim
is submitted in reply to a notice under Sec. 1.75(b)(3) and prior to
the first examination on the merits of the application, the applicant
may request a refund of any fee paid on or after December 8, 2004, for
such claim under Sec. 1.16(h), (i), or (j) or under Sec. 1.492(d),
(e), or (f). Thus, if an applicant decides to cancel the claims
necessitating an examination support document under Sec. 1.261, rather
than provide an examination support document in compliance with Sec.
1.261, the applicant may request a refund of any fee paid on or after
December 8, 2004, for such claim under Sec. 1.16(h), (i), or (j) or
under Sec. 1.492(d), (e), or (f). As the Consolidated Appropriations
Act authorizes a refund only for a claim that has been canceled before
an examination on the merits has been made of the application under 35
U.S.C. 131, the Office cannot grant a refund on the basis of the mere
rescission of a designation of a dependent claim for initial
examination (rather than cancellation of the dependent claim), or on
the basis of the cancellation of a claim after an examination on the
merits has been made of the application under 35 U.S.C. 131. If an
amendment adding one or more claims is also filed before the
application has been taken up for examination on the merits, the Office
may apply first any refund under Sec. 1.117 resulting from the
cancellation of one or more claims to any excess claims fees due as a
result of such an amendment.
   Proposed Sec. 1.117(b) provides that a claim in an application
filed under 35 U.S.C. 111(a) will also be considered canceled for
purposes of this section if a declaration of express abandonment under
Sec. 1.138(d) has been filed in an application containing such claim
in sufficient time to permit the appropriate officials to recognize the
abandonment and remove the application from the files for examination
before the application has been taken up for examination.
   Proposed Sec. 1.117(c) provides that any request for refund under
this section must be filed within two months from the date on which the
claim was canceled, and that this two-month period is not extendable.
   The patent fee provisions of the Consolidated Appropriations Act
expire (in the absence of subsequent legislation) on September 30, 2006
(at the end of fiscal year 2006). Therefore, in the absence of
subsequent legislation, the refund provision in proposed Sec. 1.117
will likewise expire on September 30, 2006 (at the end of fiscal year
2006), regardless of the date on which the excess claims fee was paid.

   Section 1.261: Section 1.261 is proposed to be added to set forth
what an "examination support document" (proposed to be required under
Sec. 1.75(b)(1)) entails.
   Proposed Sec. 1.261(a) provides that an examination support
document as used in 37 CFR part 1 means a document that includes: (1) A
statement that a preexamination search was conducted, including an
identification (in the manner set forth in MPEP Sec. 719) of the field
of search by class and subclass and the date of the search, where
applicable, and, for database searches, the search logic or chemical
structure or sequence used as a query, the name of the file or files
searched and the database service, and the date of the search; (2) an
information disclosure statement in compliance with Sec. 1.98 citing
the reference or references deemed most closely related to the subject
matter of each of the independent claims and designated dependent
claims; (3) an identification of all the limitations of the independent
claims and designated dependent claims that are disclosed by the
references cited; (4) a detailed explanation of how each of the
independent claims and designated dependent claims are patentable over
the references cited with the particularity required by Sec. 1.111(b)
and (c); (5) a concise statement of the utility of the invention as
defined in each of the independent claims; and (6) a showing of where
each limitation of the independent claims and the designated dependent
claims finds support under 35 U.S.C. 112, para. 1, in the written
description of the specification (and if the application claims the
benefit of one or more applications under title 35, United States Code,
the showing must also include where each limitation of the independent
claims and the designated dependent claims finds support under 35
U.S.C. 112, para. 1, in each such application in which such support
exists).
   Section 1.133(a)(2) was recently amended to permit an interview
before first Office action in any application if the examiner
determines that such an interview would advance prosecution of the
application. If the examiner, after considering the application and
examination support document, still has questions concerning the
invention or how the claims define over the prior art or are
patentable, the examiner may request an interview before first Office
action. If the applicant declines such a request for an interview or if
the interview does not result in the examiner obtaining the necessary
information, the examiner may issue a requirement for information under
Sec. 1.105 to obtain such information.
   Proposed Sec. 1.261(b) provides that the preexamination search
referred to in Sec. 1.261(a)(1) must involve U.S. patents and patent
application publications, foreign patent documents, and non-patent
literature, unless the applicant can justify with reasonable certainty
that no references more pertinent than those already identified are
likely to be found in the eliminated source and includes such a
justification with the statement required by Sec. 1.261(a)(1).
Proposed Sec. 1.261(b) also provides that the preexamination search
referred to in Sec. 1.261(a)(1) must encompass all of the features of
the independent claims and must cover all of the features of the
designated dependent claims separately from the claim or claims from
which the dependent claim depends, giving the claims the broadest
reasonable interpretation. A search report from a foreign patent office
will not satisfy the requirement in Sec. 1.261(a)(1) for a
preexamination search unless the search report satisfies the
requirements for a preexamination search set forth in Sec. 1.261.
   Proposed Sec. 1.261(c) provides that the applicant will be
notified and given a one-month time period within which to file a
corrected or supplemental examination support document to avoid
abandonment if: (1) The examination support document or pre-examination
search is deemed to be insufficient; (2) an explanation of the
invention or how the independent and designated dependent claims define
the invention is deemed necessary; or (3) the claims have been amended
such that the examination support document no longer covers each
independent claim. Proposed Sec. 1.261(c) further provides that this
one-month period is not extendable under Sec. 1.136(a).

   Section 1.704: Section 1.704(c) is proposed to be amended to
provide that the failure to file an examination support document in
compliance with Sec. 1.261 when necessary under Sec. 1.75(b) is a
circumstance that constitutes a failure of an applicant to engage in
reasonable efforts to conclude processing or examination of an
application under 35 U.S.C. 154(b)(2)(C) because the failure to provide
an examination support document in compliance with Sec. 1.261 when
necessary under Sec. 1.75(b) will delay processing or examination of
an application because the Office must issue a notice and await the
applicant's reply before examination of the application may begin.
Therefore, proposed Sec. 1.704(c) provides that where there is a
failure to file an examination support document in compliance with
Sec. 1.261 when necessary under Sec. 1.75(b), the period of
adjustment set forth in Sec. 1.703 shall be reduced by the number of
days, if any, beginning on the day after the date that is the later of
the filing date of the amendment necessitating an examination support
document in compliance with Sec. 1.261, or four months from the filing
date of the application in an application under 35 U.S.C. 111(a) or
from the date on which the national stage commenced under 35 U.S.C.
371(b) or (f) in an application which entered the national stage from
an international application after compliance with 35 U.S.C. 371, and
ending on the date that either an examination support document in
compliance with Sec. 1.261, or an amendment, a suggested restriction
requirement and election (Sec. 1.75(b)(3)(iii)) that obviates the need
for an examination support document under Sec. 1.261, was filed.
   The proposed changes to Secs. 1.75 and 1.104 (if adopted)
would be applicable to any application filed on or after the effective
date of the final rule, as well as to any application in which a first
Office action on the merits (Sec. 1.104) was not mailed before the
effective date of the final rule. The Office will provide applicants
who filed their applications before the effective date of the final
rule and who would be affected by the changes in the final rule with an
opportunity to designate dependent claims for initial examination, and
to submit either an examination support document under Sec. 1.261
(proposed) or a new set of claims to avoid the need for an examination
support document (if necessary). The Office appreciates that making the
changes in the final rule also applicable to certain applications filed
before its effective date will cause inconvenience to some applicants.
The Office is also requesting suggestions for ways in which the Office
can make the changes in the final rule also applicable to these pending
applications with a minimum of inconvenience to such applicants.

   Regulatory Flexibility Act: For the reasons set forth herein, the
Deputy General Counsel for General Law of the United States Patent and
Trademark Office has certified to the Chief Counsel for Advocacy of the
Small Business Administration that changes proposed in this notice will
not have a significant economic impact on a substantial number of small
entities. See 5 U.S.C. 605(b).
   This notice proposes to require an examination support document
that covers each independent claim and each dependent claim designated
for initial examination if: (1) The application contains or is amended
to contain more than ten independent claims; or (2) the number of
independent claims plus the number of dependent claims designated for
initial examination is greater than ten. There are no fees associated
with this proposed rule change.
   The changes proposed in this notice will not affect a substantial
number of small entities. The Office's PALM records (PALM records as of
October 13, 2005) show that the Office has received 216,327
nonprovisional applications (65,785 small entity) since January 1,
2005, with about 2,522 (866 small entity) of these nonprovisional
applications including more than ten independent claims. Thus, since
January 1, 2005, only 1.2 percent of all nonprovisional applications
and 1.3 percent of the small entity nonprovisional applications contain
or were amended to contain more than ten independent claims. In
addition, Office experience is that most applications which contain
more than ten independent claims contain claims that are directed to
inventions that are independent and distinct under 35 U.S.C. 121, and
the proposed rule permits an applicant to avoid submitting an
examination support document by suggesting a requirement for
restriction accompanied by an election of an invention to which there
are drawn no more than ten independent claims. Therefore, the Office
estimates that the proposed examination support document requirement
would not impact a substantial number of small entities. It is also
noted that the proposed rule change would not disproportionately impact
small entity applicants.
   The changes proposed in this notice will not have a significant
economic impact upon small entities. The primary impact of this change
would be to require applicants who submit an excessive number of claims
to share the burden of examining the application by filing an
examination support document covering the independent claims and the
designated dependent claims. There are no fees associated with this
proposed rule change. The American Intellectual Property Law
Association (AIPLA) 2003 Report of the Economic Survey indicates that
the seventy-fifth percentile charge (for those reporting) for a patent
novelty search, analysis, and opinion was $2,500.00. Given that the
pre-filing preparation of an application containing more than ten
independent claims should involve obtaining such a patent novelty
search, analysis, and opinion, the Office does not consider the
additional cost of providing an examination support document to be a
significant economic impact on an applicant who is submitting an
application containing more than ten independent claims. In any event,
any applicant may avoid the costs of such an examination support
document simply by refraining from presenting more than ten independent
claims in an application.

   Executive Order 13132: This rule making does not contain policies
with federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).

   Executive Order 12866: This rule making has been determined to be
significant for purposes of Executive Order 12866 (Sept. 30, 1993).

   Paperwork Reduction Act: This notice involves information
collection requirements which are subject to review by the Office of
Management and Budget (OMB) under the Paperwork Reduction Act of 1995
(44 U.S.C. 3501 et seq.). The collection of information involved in this
notice has been reviewed and previously approved by OMB under OMB control
number 0651-0031. This notice proposes to require an examination support
document that covers each independent claim and each dependent claim
designated for initial examination if: (1) The application contains or is
amended to contain more than ten independent claims; or (2) the number of
independent claims plus the number of dependent claims designated for
initial examination is greater than ten. The United States Patent and
Trademark Office is resubmitting an information collection package to OMB
for its review and approval because the changes in this notice do affect
the information collection requirements associated with the information
collection under OMB control number 0651-0031.
   The title, description and respondent description of the
information collection under OMB control number 0651-0031 is shown
below with an estimate of the annual reporting burdens. Included in the
estimate is the time for reviewing instructions, gathering and maintaining
the data needed, and completing and reviewing the collection of information.

   OMB Number: 0651-0031.
   Title: Patent Processing (Updating).
   Form Numbers: PTO/SB/08, PTO/SB/17i, PTO/SB/17p, PTO/SB/21-27,
   PTO/SB/24B, PTO/SB/30-32, PTO/SB/35-39, PTO/SB/42-43, PTO/SB/61-64,
   PTO/SB/64a, PTO/SB/67-68, PTO/SB/91-92, PTO/SB/96-97, PTO-2053-A/B,
   PTO-2054-A/B, PTO-2055-A/B, PTOL-413A.
   Type of Review: Approved through July of 2006.
   Affected Public: Individuals or Households, Business or Other
   For-Profit Institutions, Not-for-Profit Institutions, Farms, Federal
   Government and State, Local and Tribal Governments.
   Estimated Number of Respondents: 2,284,439.
   Estimated Time Per Response: 1 minute and 48 seconds to 12 hours.
   Estimated Total Annual Burden Hours: 2,732,441 hours.
   Needs and Uses: During the processing of an application for a
   patent, the applicant or applicant's representative may be required or
   desire to submit additional information to the United States Patent and
   Trademark Office concerning the examination of a specific application.
   The specific information required or which may be submitted includes:
Information disclosure statement and citation, examination support
documents, requests for extensions of time, the establishment of small
entity status, abandonment and revival of abandoned applications,
disclaimers, appeals, petitions, expedited examination of design
applications, transmittal forms, requests to inspect, copy and access
patent applications, publication requests, and certificates of mailing,
transmittals, and submission of priority documents and amendments.

   Comments are invited on: (1) Whether the collection of information
is necessary for proper performance of the functions of the agency; (2)
the accuracy of the agency's estimate of the burden; (3) ways to
enhance the quality, utility, and clarity of the information to be
collected; and (4) ways to minimize the burden of the collection of
information to respondents.
   Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to: (1) the Office of Information and Regulatory Affairs,
Office of Management and Budget, New Executive Office Building, Room
10202, 725 17th Street, NW., Washington, DC 20503, Attention: Desk
Officer for the Patent and Trademark Office; and (2) Robert J. Spar,
Director, Office of Patent Legal Administration, Commissioner for
Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
   Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 1

   Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.

   For the reasons set forth in the preamble, 37 CFR part 1 is
proposed to be amended as follows:

PART 1 - RULES OF PRACTICE IN PATENT CASES

   1. The authority citation for 37 CFR part 1 continues to read as
follows:

   Authority: 35 U.S.C. 2(b)(2).

   2. Section 1.75 is amended by revising paragraphs (b) and (c) to
read as follows:

Sec. 1.75  Claim(s)

* * * * *

   (b) More than one claim may be presented provided they differ
substantially from each other and are not unduly multiplied. One or
more claims may be presented in dependent form, referring back to and
further limiting another claim or claims in the same application.
Claims in dependent form shall be construed to include all the
limitations of the claim incorporated by reference into the dependent
claim. Unless a dependent claim has been designated for initial
examination prior to when the application has been taken up for
examination, the examination of such dependent claim may be held in
abeyance until the application is otherwise in condition for allowance.
The mere presentation of a dependent claim in an application is not a
designation of the dependent claim for initial examination.
   (1) An applicant must submit an examination support document in
compliance with Sec. 1.261 that covers each independent claim and each
dependent claim designated for initial examination if either:
   (i) The application contains or is amended to contain more than ten
independent claims; or
   (ii) The number of independent claims plus the number of dependent
claims designated for initial examination is greater than ten. A
dependent claim (including a multiple dependent claim) designated for
initial examination must depend only from a claim or claims that are
also designated for initial examination.
   (2) A claim that refers to another claim but does not incorporate
by reference all of the limitations of the claim to which such claim
refers will be treated as an independent claim for fee calculation
purposes under Sec. 1.16 (or Sec. 1.492) and for purposes of
paragraph (b)(1) of this section. A claim that refers to a claim of a
different statutory class of invention will also be treated as an
independent claim for fee calculation purposes under Sec. 1.16 (or
Sec. 1.492) and for purposes of paragraph (b)(1) of this section.
   (3) The applicant will be notified if an application contains or is
amended to contain more than ten independent claims, or the number of
independent claims plus the number of dependent claims designated for
initial examination in such an application is greater than ten, but an
examination support document under Sec. 1.261 has been omitted. If
prosecution of the application is not closed and it appears that
omission was inadvertent, the notice will set a one-month time period
that is not extendable under Sec. 1.136(a) within which, to avoid
abandonment of the application, the applicant must:
   (i) File an examination support document in compliance with Sec.
1.261 that covers each independent claim and each dependent claim
designated for initial examination;
   (ii) Cancel the requisite number of independent claims and rescind
the designation for initial examination of the requisite number of
dependent claims that necessitate an examination support document under
Sec. 1.261; or
   (iii) Submit a suggested requirement for restriction accompanied by
an election without traverse of an invention to which there are drawn
no more than ten independent claims as well as no more than ten total
independent claims and dependent claims designated for initial
examination.
   (4) If a nonprovisional application contains at least one claim
that is patentably indistinct from at least one claim in one or more
other nonprovisional applications or patents, and if such one or more
other nonprovisional applications or patents and the first
nonprovisional application are owned by the same person, or are subject
to an obligation of assignment to the same person, and if such
patentably indistinct claim has support under the first paragraph of 35
U.S.C. 112 in the earliest of such one or more other nonprovisional
applications or patents, the Office may require elimination of the
patentably indistinct claims from all but one of the nonprovisional
applications. If the patentably indistinct claims are not eliminated
from all but one of the nonprovisional applications, the Office will
treat the independent claims and the dependent claims designated for
initial examination in the first nonprovisional application and in each
of such other nonprovisional applications or patents as present in each
of the nonprovisional applications for purposes of paragraph (b)(1) of
this section.
   (c) Any dependent claim which refers to more than one other claim
("multiple dependent claim") shall refer to such other claims in the
alternative only. A multiple dependent claim shall not serve as a basis
for any other multiple dependent claim. For fee calculation purposes
under Sec. 1.16 (or Sec. 1.492) and for purposes of paragraph (b)(1)
of this section, a multiple dependent claim will be considered to be
that number of claims to which direct reference is made therein. For
fee calculation purposes under Sec. 1.16 (or Sec. 1.492) and for
purposes of paragraph (b)(1) of this section, any claim depending from
a multiple dependent claim will be considered to be that number of
claims to which direct reference is made in that multiple dependent
claim. In addition to the other filing fees, any original application
which is filed with, or is amended to include, multiple dependent
claims must have paid therein the fee set forth in Sec. 1.16(j). A
multiple dependent claim shall be construed to incorporate by reference
all the limitations of each of the particular claims in relation to
which it is being considered.

* * * * *

    3. Section 1.104 is amended by revising paragraphs (a)(1), (b), and
(c)(1) to read as follows:

Sec. 1.104  Nature of examination.

   (a) Examiner's action. (1) On taking up an application for
examination or a patent in a reexamination proceeding, the examiner
shall make a thorough study thereof and shall make a thorough
investigation of the available prior art relating to the subject matter
of the invention as claimed in the independent and the designated
dependent claims. The examination shall be complete with respect both
to compliance of the application or patent under reexamination with the
applicable statutes and rules and to the patentability of the invention
as claimed in the independent and the designated dependent claims, as
well as with respect to matters of form, unless otherwise indicated.

* * * * *

   (b) Completeness of examiner's action. The examiner's action will
be complete as to all matters, except that in appropriate
circumstances, such as misjoinder of invention, fundamental defects in
the application, and the like, the action of the examiner may be
limited to such matters before further action is made. However, matters
of form need not be raised by the examiner until a claim is found
allowable. The examination of a dependent claim that has not been
designated for initial examination may be held in abeyance until the
application is otherwise in condition for allowance.
   (c) Rejection of claims. (1) If the invention claimed in the
independent and designated dependent claims is not considered
patentable, the independent and the designated dependent claims, or
those considered unpatentable, will be rejected.

* * * * *

   4. Section 1.105 is amended by adding a new paragraph (a)(1)(ix) to
read as follows:

Sec. 1.105  Requirements for information.

   (a)(1) * * *
   (ix) Support in the specification: Where (by page or paragraph and
line) the specification of the application, or any application the
benefit of whose filing date is sought under title 35, United States
Code, provides written description support for the invention as defined
in the claims (independent or dependent), and of manner and process of
making and using it, in such full, clear, concise, and exact terms as
to enable any person skilled in the art to which it pertains, or with
which it is most nearly connected, to make and use the invention, under
the first paragraph of 35 U.S.C. 112.

* * * * *

   5. Section 1.117 is added to read as follows:

Sec. 1.117  Refund due to cancellation of claim.

   (a) If an amendment canceling a claim is submitted in reply to a
notice under Sec. 1.75(b)(3) and prior to the first examination on the
merits of the application, the applicant may request a refund of any
fee paid on or after December 8, 2004, for such claim under Sec.
1.16(h), (i), or (j) or under Sec. 1.492(d), (e), or (f).
   (b) A claim in an application filed under 35 U.S.C. 111(a) will
also be considered canceled for purposes of this section if a
declaration of express abandonment under Sec. 1.138(d) has been filed
in an application containing such claim in sufficient time to permit
the appropriate officials to recognize the abandonment and remove the
application from the files for examination before the application has
been taken up for examination.
   (c) Any request for refund under this section must be filed within
two months from the date on which the claim was canceled. This two-
month period is not extendable.

   6. Section 1.261 is added in numerical order under the undesignated
center heading "Miscellaneous Provisions" to read as follows:

Sec. 1.261  Examination support document.

   (a) An examination support document as used in this part means a
document that includes the following:
   (1) A statement that a preexamination search was conducted,
including an identification of the field of search by United States
class and subclass and the date of the search, where applicable, and,
for database searches, the search logic or chemical structure or
sequence used as a query, the name of the file or files searched and
the database service, and the date of the search;
   (2) An information disclosure statement in compliance with Sec.
1.98 citing the reference or references deemed most closely related to
the subject matter of each of the independent claims and designated
dependent claims;
   (3) For each reference cited, an identification of all the
limitations of the independent claims and designated dependent claims
that are disclosed by the reference;
   (4) A detailed explanation of how each of the independent claims
and designated dependent claims are patentable over the references
cited with the particularity required by Sec. 1.111(b) and (c);
   (5) A concise statement of the utility of the invention as defined
in each of the independent claims; and
   (6) A showing of where each limitation of the independent claims
and the designated dependent claims finds support under the first
paragraph of 35 U.S.C. 112 in the written description of the
specification. If the application claims the benefit of one or more
applications under title 35, United States Code, the showing must also
include where each limitation of the independent claims and the
designated dependent claims finds support under the first paragraph of
35 U.S.C. 112 in each such application in which such support exists.
   (b) The preexamination search referred to in paragraph (a)(1) of
this section must involve U.S. patents and patent application
publications, foreign patent documents, and non-patent literature,
unless the applicant can justify with reasonable certainty that no
references more pertinent than those already identified are likely to
be found in the eliminated source and includes such a justification
with the statement required by paragraph (a)(1) of this section. The
preexamination search referred to in paragraph (a)(1) of this section
must be directed to the claimed invention and encompass all of the
features of the independent claims and must cover all of the features
of the designated dependent claims separately from the claim or claims
from which the dependent claim depends, giving the claims the broadest
reasonable interpretation. The preexamination search referred to in
paragraph (a)(1) of this section must also encompass the disclosed
features that may be claimed.
   (c) If an examination support document is required, but the
examination support document or pre-examination search is deemed to be
insufficient, an explanation of the invention or how the independent
and designated dependent claims define the invention is deemed
necessary, or the claims have been amended such that the examination
support document no longer covers each independent claim and each
designated dependent claim, applicant will be notified and given a one-
month time period within which to file a corrected or supplemental
examination support document to avoid abandonment. This one-month
period is not extendable under Sec. 1.136(a).

   7. Section 1.704 is amended by redesignating paragraph (c)(11) as
(c)(12) and adding new paragraph (c)(11) to read as follows:

Sec. 1.704  Reduction of period of adjustment of patent term.

* * * * *

   (c) * * *
   (11) Failure to file an examination support document in compliance
with Sec. 1.261 when necessary under Sec. 1.75(b), in which case the
period of adjustment set forth in Sec. 1.703 shall be reduced by the
number of days, if any, beginning on the day after the date that is the
later of the filing date of the amendment necessitating an examination
support document under Sec. 1.261, or four months from the filing date
of the application in an application under 35 U.S.C. 111(a) or from the
date on which the national stage commenced under 35 U.S.C. 371(b) or
(f) in an application which entered the national stage from an
international application after compliance with 35 U.S.C. 371, and
ending on the date that either an examination support document in
compliance with Sec. 1.261, or an amendment or suggested restriction
requirement and election (Sec. 1.75(b)(3)(iii)) that obviates the need
for an examination support document under Sec. 1.261, was filed;

* * * * *

December 19, 2005                                              JON W. DUDAS
                                            Under Secretary of Commerce for
                                                  Intellectual Property and
                                              Director of the United States
                                                Patent and Trademark Office