United States Patent and Trademark Office OG Notices: 11 Sep 2007
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket Nos.: PTO-P-2005-0022; PTO-P-2005-0023]
RINs 0651-AB93; 0651-AB94
Changes To Practice for Continued Examination Filings,
Patent Applications Containing Patentably Indistinct
Claims, and Examination of Claims in Patent Applications
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office (Office) is
revising the rules of practice in patent cases relating to continuing
applications and requests for continued examination practices, and for
the examination of claims in patent applications. The Office is
revising the rules of practice to require that any third or subsequent
continuing application that is a continuation application or a
continuation-in-part application, and any second or subsequent request
for continued examination in an application family, be filed to obtain
consideration of an amendment, argument, or evidence, and be supported
by a showing as to why the amendment, argument, or evidence sought to
be entered could not have been previously submitted. The Office is also
revising the rules of practice to provide that an applicant must
provide an examination support document that covers all of the claims
in an application if the application contains more than five
independent claims or more than twenty-five total claims. The Office is
also revising the rules of practice with respect to multiple
applications that have the same claimed filing or priority date,
substantial overlapping disclosure, a common inventor, and common
ownership. These changes will allow the Office to conduct a better and
more thorough and reliable examination of patent applications.
DATES: Effective Date: November 1, 2007. For applicability and
compliance dates see SUPPLEMENTARY INFORMATION.
FOR FURTHER INFORMATION CONTACT: The Office of Patent Legal
Administration, by telephone at (571) 272-7704, by mail addressed to:
Mail Stop Comments - Patents, Commissioner for Patents, P.O. Box 1450,
Alexandria, VA 22313-1450, or by facsimile to (571) 273-0100, marked to
the attention of the Office of Patent Legal Administration.
SUPPLEMENTARY INFORMATION: The Office is revising the rules of practice
in patent cases relating to continued examination filings (continuing
applications and requests for continued examination), multiple
applications containing patentably indistinct claims, and the
examination of claims in applications.
The Office is revising the rules of practice for continuation
applications, continuation-in-part applications and requests for
continued examination. Under these revisions, an applicant may file two
continuation applications (or continuation-in-part applications), plus
a request for continued examination in the application family, without
any justification. An application family includes the initial
application and its continuation or continuation-in-part applications.
Applicant may file any additional continuation application,
continuation-in-part application, or request for continued examination
with a justification. Specifically, the Office is revising the rules of
practice to require a justification for any third or subsequent
continuing application that is a continuation application or a
continuation-in-part application, and any second or subsequent request
for continued examination in an application family. The third or
subsequent continuing application or request for continued examination
must be filed with a petition showing why the amendment, argument, or
evidence sought to be entered could not have been previously submitted.
The Office is also revising the rules of practice for divisional
applications. Under these revisions, an applicant is permitted to file
a divisional application of an application for the claims to a non-
elected invention that has not been examined if the application was
subject to a requirement for restriction. The divisional application
need not be filed during the pendency of the application subject to a
requirement for restriction, as long as the copendency requirement of
35 U.S.C. 120 is met. Thus, applicant may file the divisional
application during the pendency of the application that was subject to
a requirement for restriction or the pendency of any continuing
application of such an application. Applicant may also file two
continuation applications of the divisional application plus a request
for continued examination in the divisional application family, without
any justification. A divisional application family includes the
divisional application and its continuation applications. In addition,
applicant may file any additional continuation application or request
for continued examination in the divisional application family with a
petition and adequate justification.
The Office is also revising the rules of practice for the
examination of claims in an application to provide that if the number
of independent claims is greater than five or the number of total
claims is greater than twenty-five, the Office will require the
applicant to help focus examination by providing additional information
to the Office in an examination support document covering all of the
claims (whether in independent or dependent form) in the application.
The Office is also revising the rules of practice with respect to
multiple applications that have patentably indistinct claims and a
common assignee by either requiring that all patentably indistinct
claims in such applications be submitted in a single application or
effectively treating the multiple applications as a single application.
These changes will mean more effective and efficient examination
for the typical applicant without any additional work on the part of
most applicants. However, in the applications that place an extensive
burden on the Office, the applicant will be required to help focus
examination by providing additional information to the Office.
Applicability Dates: The changes to 37 CFR 1.75, 1.142(c), and
1.265 are applicable to any nonprovisional application filed under 35
U.S.C. 111(a) on or after November 1, 2007, and to any nonprovisional
application entering the national stage after compliance with 35 U.S.C.
371 on or after November 1, 2007. The changes to 37 CFR 1.75, 1.142(c),
and 1.265 are also applicable to any nonprovisional application filed
before November 1, 2007, in which a first Office action on the merits
was not mailed before November 1, 2007.
The changes to 37 CFR 1.117 are applicable to any nonprovisional
application filed before, on, or after November 1, 2007, with respect
to any fee under 37 CFR 1.16(h), (i), or (j) or 1.492(d), (e), or (f)
paid on or after December 8, 2004.
The changes to 37 CFR 1.78(a), 1.78(d)(1), 1.495 and 1.704(c)(11)
are applicable only to any application, including any continuing
application, filed under 35 U.S.C. 111(a) on or after November 1, 2007,
or any application entering the national stage after compliance with 35
U.S.C. 371 on or after November 1, 2007. Except as otherwise indicated
in this final rule, any application filed under 35 U.S.C. 111(a) on or
after November 1, 2007, or any application entering the national stage
after compliance with 35 U.S.C. 371 on or after November 1, 2007, seeking
to claim the benefit under 35 U.S.C. 120, 121, or 365(c) and 37 CFR 1.78
of a prior-filed nonprovisional application or international application
must either: (1) Meet the requirements specified in one of 37 CFR
1.78(d)(1)(i) through (d)(1)(v); or (2) include a grantable petition under
37 CFR 1.78(d)(1)(vi).
With respect to applications that claim the benefit under 35 U.S.C.
120, 121, or 365(c) only of nonprovisional applications or
international applications filed before August 21, 2007: an application
is not required to meet the requirements set forth in 37 CFR 1.78(d)(1)
if: (1) The application claims the benefit under 35 U.S.C. 120, 121, or
365(c) only of nonprovisional applications filed before August 21, 2007
or applications entering the national stage after compliance with 35
U.S.C. 371 before August 21, 2007; and (2) there is no other
application filed on or after August 21, 2007 that also claims the
benefit under 35 U.S.C. 120, 121, or 365(c) of such prior-filed
nonprovisional applications or international applications.
The changes to 37 CFR 1.114 are applicable to any application in
which a request for continued examination is filed on or after November
1, 2007. Specifically, a petition under 37 CFR 1.114(g) must accompany
any request for continued examination filed on or after November 1,
2007, in an application in which a request for continued examination
has previously been filed, or in a continuation application or
continuation-in-part application of an application in which a request
for continued examination has previously been filed, or in an
application whose benefit is claimed in a continuation application or
continuation-in-part application in which a request for continued
examination has previously been filed.
The changes to 37 CFR 1.17, 1.26, 1.52, 1.53, 1.76, 1.78 (except
1.78(a) and 1.78(d)(1)), 1.104, 1.105, 1.110, 1.136, 1.142(a), and
1.145 are applicable to any nonprovisional application pending on or
after November 1, 2007.
Compliance Date: For applications filed before November 1, 2007,
applicants must comply with the requirements in 37 CFR 1.78(f)(1)
within the time periods specified in 37 CFR 1.78(f)(1)(ii), or by
February 1, 2008, whichever is later, and applicants must comply with
the requirements in 37 CFR 1.78(f)(2) within the time periods specified
in 37 CFR 1.78(f)(2)(iii), or by February 1, 2008, whichever is later.
Table of Contents
I. Background
A. Changes to Practice for Continued Examination Filings
B. Changes to Practice for Examination of Claims in Patent Applications
C. Changes to Practice for Patent Applications Containing Patentably
Indistinct Claims
D. Retention of First Action Final Practice and Changes in Second
Action Final Practice
II. Discussion of Specific Rules
This final rule amends the following sections in title 37 of the
Code of Federal Regulations (CFR): 1.17, 1.26, 1.52,
1.53, 1.75, 1.76, 1.78, 1.104, 1.105, 1.110, 1.114, 1.136, 1.142,
1.145, 1.495, and 1.704. This final rule adds 1.117, and
1.265 to title 37 of the CFR.
III. Response to Comments
A. Changes to Continuing Application Practice
B. Treatment of Third and Subsequent Continuation or
Continuation-In-Part Applications
C. Treatment of Second and Subsequent Requests for Continued
Examination
D. Petitions Related to Additional Continuation Applications,
Continuation-In-Part Applications, and Requests for Continued
Examination
E. Treatment of Multiple Applications
F. Changes to Practice for Examination of Claims
G. Number of Independent and Total Claims Permitted Without an
Examination Support Document
H. Examination Support Document Requirements
I. The Office's Authority to Promulgate the Changes in this
Final Rule
J. Changes to Internal Practice
K. Suggestions Relating to Legislative Changes
L. Effective Date of the Changes in this Final Rule
M. Miscellaneous
IV. Rule Making Considerations
A. Administrative Procedure Act
B. Regulatory Flexibility Act
C. Executive Order 13132 (Federalism)
D. Executive Order 12866 (Regulatory Planning and Review)
E. Executive Order 13175 (Tribal Consultation)
F. Executive Order 13211 (Energy Effects)
G. Executive Order 12988 (Civil Justice Reform)
H. Executive Order 13045 (Protection of Children)
I. Executive Order 12630 (Taking of Private Property)
J. Congressional Review Act
K. Unfunded Mandates Reform Act of 1995
L. National Environmental Policy Act
M. National Technology Transfer and Advancement Act
N. Paperwork Reduction Act
I. Background
In view of the need for a better focused and effective examination
process to reduce the large and growing backlog of unexamined
applications while maintaining or improving the quality of issued
patents, the Office published two notices in January of 2006 proposing
changes to the practice for continuing applications, requests for
continued examination, multiple applications containing patentably
indistinct claims, and the examination of claims in applications. See
Changes to Practice for Continuing Applications, Requests for Continued
Examination Practice, and Applications Containing Patentably Indistinct
Claims, 71 FR 48 (Jan. 3, 2006), 1302 Off. Gaz. Pat. Office 1318 (Jan.
24, 2006) (proposed rule) (hereinafter "Continuing Applications
Proposed Rule") and Changes to Practice for the Examination of Claims
in Patent Applications, 71 FR 61 (Jan. 3, 2006), 1302 Off. Gaz. Pat.
Office 1329 (Jan. 24, 2006) (proposed rule) (hereinafter "Claims
Proposed Rule").
Both the Continuing Applications Proposed Rule and the Claims
Proposed Rule requested public comments and provided a comment period
of four months to give the public an opportunity to submit written
comments. The Office provided this extended comment period to ensure
that the public would have sufficient time to submit written comments
on the proposed changes to the rules of practice and to ensure that the
Office would receive comments from all interested persons and
organizations. In addition to the notices and requests for written
comments, the Office conducted public meetings including town hall
meetings and presentations at various locations in the United States to
discuss the proposed changes and obtain feedback from the public. The
Office received over five hundred written comments from government
agencies, universities, intellectual property organizations, industry,
law firms, individual patent practitioners, and the general public. The
Office has spent nearly one year carefully analyzing and considering
all of the written comments that were received. The comments and the
Office's responses to the comments are provided in Section III,
Response to Comments. In response to the comments, the Office has made
appropriate modifications to the proposed changes to balance the
interests of the public, patent owners, applicants, practitioners, and
other interested parties with the need to reduce the large and growing
backlog of unexamined patent applications, improve the quality of
issued patents, and make the patent examination process more effective.
Under the proposed changes, applicants would have been permitted
to file one of the following without any justification: A continuation
application, a continuation-in-part application, or a request for continued
examination. By contrast, this final rule permits applicants to file two
continuation applications or continuation-in-part applications, plus a
single request for continued examination in an application family, without
any justification. Applicant may file any additional continuing application
or request for continued examination with a justification. Under the
proposed changes, about eleven percent of the applications and requests for
continued examination filed in fiscal year 2006 would have required a
justification, where under the changes being adopted in this final rule
less than three percent of the applications and requests for continued
examination filed in fiscal year 2006 would have required a justification.
The proposed changes would have permitted applicants to file a
divisional application of an application for the claims to a non-
elected invention if the application is subject to a requirement for
restriction and the divisional application is filed during the pendency
of that application. However, this final rule permits applicant to file
a divisional application of an application if the application is
subject to a requirement for restriction and the divisional application
meets the copendency requirement of 35 U.S.C. 120. Thus, this final
rule allows applicants to file divisional applications in series
whereas the proposed rule would have required applicants to file
divisional applications in parallel. This final rule also permits
applicant to file two continuation applications of a divisional
application, plus a request for continued examination in the divisional
application family, without any justification. Under the proposed
changes, about thirteen percent of divisional applications filed in
fiscal year 2006 would need to have been filed earlier, where the
changes being adopted in this final rule would not have required any of
the divisional applications filed in fiscal year 2006 to have been
filed earlier.
The proposed changes would have required applicant to provide an
examination support document before the first Office action on the
merits if applicant designated more than ten representative claims
including all of the independent claims in the application for initial
examination. The Office received a substantial number of comments from
the public opposing this "representative claims" examination approach
and suggesting that the Office should simply adopt a threshold to
invoking the examination support document requirement based upon
whether an application contains more than a given number of independent
and total claims. The Office took those comments into consideration and
adopted a similar approach. This final rule requires an applicant to
submit an examination support document before the issuance of a first
Office action on the merits of an application to assist in the
patentability determination when the applicant presents more than five
independent claims or more than twenty-five total claims in an
application. This final rule also encourages applicant to submit all of
the claims that are patentably indistinct in one single application and
requires applicant to identify multiple applications that contain
patentably indistinct claims (same as the proposed rule). Therefore,
for each invention, an applicant is permitted to present up to fifteen
independent claims and seventy-five total claims via an initial
application and two continuation or continuation-in-part applications
without providing either an examination support document or
justification, as long as those applications are either prosecuted
serially or contain patentably distinct claims. An examination support
document must include a preexamination search statement, a listing of
references deemed most closely related to the subject matter of each of
the claims, an identification of all of the claim limitations that are
disclosed in the references, a detailed explanation particularly
pointing out how each of the independent claims is patentable over the
cited references, and a showing of where each claim limitation finds
support under 35 U.S.C. 112, 1, in the application and any prior-
filed application. The examination support document will assist the
Office in the examination process and the determination of
patentability of the invention by providing the most relevant prior art
and other useful information.
Under the proposed changes, about one percent of the applications
filed in fiscal year 2006 would have required either the cancellation
of one or more independent claims or an examination support document.
Furthermore, about eighty percent of the applications filed in fiscal
year 2006 would have required either a designation of dependent claims
for initial examination or an examination support document. Under the
changes being adopted in this final rule, less than eight percent of
the applications filed in fiscal year 2006 would have required either
the cancellation of one or more independent claims or an examination
support document. In addition, less than twenty-five percent of the
applications filed in fiscal year 2006 would have required either the
cancellation of one or more dependent claims or an examination support
document. However, by prosecuting an initial application and two
continuation applications serially, about ninety-five percent of the
applications filed in fiscal year 2006 would not have required either
the cancellation of any claims or an examination support document.
A. Changes to Practice for Continued Examination Filings
The volume of continued examination filings (including both
continuing applications and requests for continued examination) and
duplicative applications that contain "conflicting" or patentably
indistinct claims, is having a crippling effect on the Office's ability
to examine "new" (i.e., non-continuing) applications. Continued
examination filings, other than divisional applications, as a
percentage of overall filings, has increased from about 11.4 percent in
fiscal year 1980, to about 18.9 percent in fiscal year 1990, to 21.9
percent in fiscal year 2000, to 29.4 percent in fiscal year 2006. The
cumulative effect of these continued examination filings is too often
to divert patent examining resources from the examination of new
applications disclosing new technology and innovations, to the
examination of applications that are a repetition of prior applications
that have already been examined and have either issued as patents or
become abandoned. In addition, when the continued examination process
fails to reach a final resolution, and when multiple applications
containing claims to patentably indistinct inventions are filed, the
public is left with an uncertainty as to what the set of patents
resulting from the initial application will cover. Thus, these
practices impose a burden on innovation both by retarding the Office's
ability to examine new applications and by undermining the function of
claims to notify the public as to what technology is or is not
available for use.
Commentators have noted that an applicant's use of the unrestricted
continuing application and request for continued examination practices
may preclude the Office from ever finally rejecting an application or
even from ever finally allowing an application. See Mark A. Lemley and
Kimberly A. Moore, Ending Abuse of Patent Continuations, 84 B.U. L. Rev.
63, 64 (2004). The burden imposed by the repetitive filing of applications
(as continuing applications) on the Office (as well as on the public) is
not a recent predicament. See To Promote the Progress of Useful Arts,
Report of the President's Commission on the Patent System, at 17-18 (1966)
(recommending changes to prevent the repetitive filing of dependent (i.e.,
continuing) applications). Unrestricted continued examination filings and
multiple applications containing patentably indistinct claims, however,
are now having such an impact on the Office's ability to examine new
applications that it is appropriate for the Office to clarify the
applicant's duty to advance applications to final action by placing
some conditions on the filing of multiple continuing applications,
requests for continued examination, and other multiple applications to
the same invention. See 35 U.S.C. 2(b) (authorizes the Office to
establish regulations, not inconsistent with law, which shall govern
the conduct of proceedings in the Office, and shall facilitate and
expedite the processing of patent applications). The changes in this
final rule will permit the Office to apply the patent examining
resources otherwise consumed by these applications to the examination
of new applications and thereby reduce the backlog of unexamined
applications.
The Office also notes that not every application as filed
particularly points out and distinctly claims what the applicant
regards as his or her invention. For example, this may occur where the
applicant's attorney or agent has not adequately reviewed or revised
the application documents received from the applicant. Applicants
frequently file literal translations of foreign documents as
applications, resulting in problems with compliance with U.S. patent
law, such as the written description requirement, as well as problems
with formatting and presentation of the claims. In these situations,
examination of what applicants actually regard as their invention may
not begin until after one or more continued examination filings.
Applicants should not rely on an unlimited number of continued
examination filings to correct deficiencies in the claims and
disclosure that applicant or applicant's representative could have
corrected earlier. In addition, while only a small minority of
applications are a third or subsequent continuing application, it
appears that some applicants and practitioners have used multiple
continued examination filings as a strategy to delay the conclusion of
examination. The Office, however, considers such a strategy to be a
misuse of continued examination practice. Specifically, the Office
considers such a strategy to be inconsistent with an applicant's and
practitioner's duty under 37 CFR 10.18(b)(2)(i) not to submit an
application or other filing to cause unnecessary delay or needless
increase in the cost of prosecution before the Office. This misuse of
continued examination practice also prejudices the public by keeping
applications in pending status while awaiting developments in similar
or parallel technology and then later amending their applications to
cover these developments. The courts have permitted the addition of
claims, when supported under 35 U.S.C. 112, 1, to encompass products
or processes later discovered in the marketplace. See PIN/NIP, Inc. v.
Platt Chemical Co., 304 F.3d 1235, 1247, 64 U.S.P.Q.2d 1344, 1352 (Fed.
Cir. 2002). However, the practice of maintaining continuing
applications to delay the conclusion of examination for the purpose of
adding claims after such discoveries is inconsistent with the duty
under 37 CFR 10.18(b)(2)(i) not to submit filings to cause unnecessary
delay or needless increase in the cost of prosecution before the
Office.
The Office, in light of its backlog and anticipated continued
increase in application filings, is making every effort to become more
efficient. Achieving greater efficiency requires the cooperation of
those who provide the input into the examination process, the
applicants and their representatives.
In the Continuing Applications Proposed Rule, the Office proposed
to change the rules of practice to require that: (1) Any second or
subsequent continued examination filing (continuation or continuation-
in-part application or request for continued examination) include a
showing that the amendment, argument, or evidence could not have been
submitted prior to the close of prosecution after a single continuation
or continuation-in-part application or request for continued
examination; and (2) multiple applications that have the same claimed
filing or priority date, substantial overlapping disclosure, a common
inventor, and a common assignee include either an explanation of how
the claims are patentably distinct, or a terminal disclaimer and
explanation of why patentably indistinct claims have been filed in
multiple applications.
In response to the comments on the proposed changes to the
practices for continued examination filings, the Office has modified
these provisions relative to proposed changes. Under this final rules,
an applicant may instead file two continuation applications (or two
continuation-in-part applications, or one continuation application and
one continuation-in-part application), plus a request for continued
examination in any one of the initial application or two continuation
or continuation-in-part applications, without any justification. Any
additional continuation application, continuation-in-part application,
or request for continued examination, however, must be filed to obtain
consideration of an amendment, argument, or evidence, and be supported
by a showing as to why the amendment, argument, or evidence sought to
be entered could not have been previously submitted. This final rule
would also ease the burden of examining multiple applications that have
the same claimed filing or priority date, substantial overlapping
disclosure, a common inventor, and common assignee by requiring that
all patentably indistinct claims in such applications be submitted in a
single application absent good and sufficient reason.
As discussed previously, the unrestricted continued examination
practice and the filing of multiple applications containing patentably
indistinct claims are impairing the Office's ability to examine new
applications without real certainty that these practices effectively
advance prosecution, improve patent quality, or serve the typical
applicant or the public. These changes to the rules in title 37 of the
CFR are intended to ensure that continued examination filings are used
efficiently to move applications forward. The Office expects that the
changes to the rules of practice in this final rule will: (1) Lead to
more focused and efficient examination, improve the quality of issued
patents, result in patents that issue faster, and give the public
earlier notice of what the patent claims cover; and (2) address the
growing practice of filing (by a common applicant or assignee) multiple
applications containing patentably indistinct claims.
35 U.S.C. 111(a) and 120, respectively, permit an applicant to file
a nonprovisional application and to claim the benefit of a prior-filed
nonprovisional application. Similarly, 35 U.S.C. 363 and 365(c),
respectively, permit an applicant to file an international application
under Patent Cooperation Treaty (PCT) Article 11 and 35 U.S.C. 363 and,
if the international application designates the United States of
America, to claim the benefit of a prior-filed international
application designating the United States of America or a prior-filed
nonprovisional application. Similarly again, 35 U.S.C. 111(a) and
365(c) permit an applicant to file a nonprovisional application (filed
under 35 U.S.C. 111(a)) and to claim the benefit of a prior-filed
international application designating the United States of America
(under 35 U.S.C. 365(c)).
35 U.S.C. 120 is generally considered the statutory basis for
continuing application practice. See Symbol Techs., Inc. v. Lemelson
Med., 277 F.3d 1361, 1365, 161 U.S.P.Q.2d 1515, 1518 (Fed. Cir. 2002)
(35 U.S.C. 120 and 121 form the backbone of modern continuation and
divisional application practice) (Symbol I). Nothing in 35 U.S.C. 120
or its legislative history suggests that the Office must or even should
permit an applicant to file an unlimited number of continuing
applications without any justification.
The practice of filing "continuation applications" arose early in
Office practice mainly as a procedural device to effectively permit the
applicant to amend an application after a rejection and receive an
examination of the "amended" (or new) application. See In re Bogese,
22 U.S.P.Q.2d 1821, 1824 (Comm'r Pats. 1991) (Bogese I). The concept of
a continuation application per se was first recognized in Godfrey v.
Eames, 68 U.S. (1 Wall.) 317, 325-26 (1864). See Bogese I, 22
U.S.P.Q.2d at 1824. 35 U.S.C. 120 is a codification of the continuation
application practice recognized in Godfrey v. Eames. See id. (citing In
re Hogan, 559 F.2d 595, 603, 194 U.S.P.Q. 527, 535 (C.C.P.A. 1977)).
An applicant should understand, however, that he or she does not
have an unfettered right to file multiple continuing applications
without making a good faith attempt to claim the applicant's invention.
35 U.S.C. 2(b) gives the Director the inherent authority to promulgate
regulations to ensure that applicants prosecute applications in good
faith. Moreover, by assuming that an unlimited number of continuations
are available, applicants have slipped into unfocused practices in
prosecution that impede the Office's ability to conduct effective
examination. Such practices likewise cause delays in prosecution and
increase the cost of examination, both of which are contrary to an
applicant's duties under the rules of conduct before the Office set
forth in 37 CFR Part 10.
The changes in this final rule do not set a per se limit on the
number of continuing applications. Nor are the changes intended to
address extreme cases of prosecution laches or to codify In re Bogese,
303 F.3d 1362, 1369, 64 U.S.P.Q.2d 1448, 1453 (Fed. Cir. 2002) (Bogese
II). Rather, the rules require that applicants who file multiple
continuing applications from the same initial application show that the
third and following applications, and any second or subsequent request
for continued examination in an application family, be filed to obtain
consideration of an amendment, argument, or evidence that could not
have been previously submitted.
Likewise, the Office is putting conditions on request for continued
examination practice. 35 U.S.C. 132(b) provides for the request for
continued examination practice set forth in 1.114. Unlike
continuation application practice, the request for continued
examination practice was recently added to title 35, United States
Code, in section 4403 of the American Inventors Protection Act of 1999
(AIPA). See Public Law 106-113, 113 Stat. 1501, 1501A-560 (1999). 35
U.S.C. 132(b) provides, inter alia, that the Office "shall prescribe
regulations to provide for the continued examination of applications
for patent at the request of the applicant." Nothing in 35 U.S.C.
132(b) or its legislative history suggests that the Office must or even
should permit an applicant to file an unlimited number of requests for
continued examination in an application. Therefore, this final rule
allows applicants to file their first request for continued examination
in an application family without any justification, but requires
applicants to justify the need for any further requests for continued
examination in light of the past prosecution.
The Office appreciates that appropriate continued examination
practice permits an applicant to obtain further examination and advance
an application to final action. The unrestricted continued examination
practice, however, does not provide adequate incentives to assure that
the exchanges between an applicant and the examiner during the
examination process are efficient. The marginal value vis-a-vis
the patent examination process as a whole of exchanges between an
applicant and the examiner during the examination process tends to
decrease after each additional continued examination filing. The Office
resources absorbed by the examination of additional continued
examination filings are diverted away from the examination of new
applications, thus increasing the backlog of unexamined applications.
The Office also appreciates that applicants sometimes use continued
examination practice to obtain further examination rather than file an
appeal to avoid the delays that historically have been associated with
the appeal process. The Office, however, has taken major steps to
eliminate such delays. First, the Board of Patent Appeals and
Interferences (BPAI) has radically reduced the inventory of pending
appeals and appeal pendency during the last five fiscal years. Second,
the Office has adopted an appeal conference program to review the
rejections in applications in which an appeal brief has been filed. See
Manual of Patent Examining Procedure (MPEP) 1207.01 (8th ed.
2001) (Rev. 5, August 2006). Third, the Office has also adopted a pre-
appeal brief conference program to permit an applicant to request that
a panel of examiners review the rejections in his or her application
prior to the filing of an appeal brief. See New Pre-Appeal Brief
Conference Program, 1296 Off. Gaz. Pat. Office 67 (July 12, 2005), and
Extension of the Pilot Pre-Appeal Brief Conference Program, 1303 Off.
Gaz. Pat. Office 21 (Feb. 7, 2006). These changes provide for a
relatively expeditious review of rejections in an application under
appeal. Thus, for an applicant faced with a rejection that he or she
feels is improper, the appeal process offers a more effective
resolution than seeking continued examination before the examiner.
This final rule also provides that an applicant may file a
divisional application directed to each non-elected invention that has
not been examined if the prior-filed application is subject to a
requirement for restriction. The divisional application need not be
filed during the pendency of the application subject to a requirement
for restriction, as long as the copendency requirement of 35 U.S.C. 120
is met. This final rule also permits applicant to file two continuation
applications of a divisional application plus a request for continued
examination in the divisional application family, without any
justification. This final rule, however, does not permit a
"divisional" application to be filed if it is not the result of a
requirement for restriction in the prior-filed application (a so-called
"voluntary" divisional application). Such a "voluntary" divisional
application would be a continuation application, and subject to the
requirements for continuation applications, under the changes in this
final rule.
B. Changes to Practice for Examination of Claims in Patent Applications
A number of patent applications contain a large number of claims,
which makes efficient and effective
examination of such applications problematic. The Office previously
requested comments in 1998 on a proposal to limit the number of
independent and total 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). Specifically, in 1998, the Office requested comments on a
proposal to change the rules of practice to: (1) Limit the number of
total claims that will be examined (at one time) in an application to
forty; and (2) limit the number of independent claims that will be
examined (at one time) in an application to six. See Changes to
Implement the Patent Business Goals, 63 FR at 53506, 1215 Off. Gaz.
Pat. Office at 95. Under the 1998 proposal, if the applicant presented
more than forty total claims or six independent claims for examination
at one time, the Office would withdraw the excess claims from
consideration, and require the applicant to cancel those claims. See
id. The Office, however, ultimately decided not to proceed with a
proposed change to 1.75 to place an absolute limit on 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).
Applications which contain a large number of claims, however,
continue to absorb an inordinate amount of patent examining resources,
as they are extremely difficult to properly process and examine. As a
result, contrary to the proposal under consideration in 1998, the
Claims Proposed Rule sought a change to the practice for examination of
claims that would not place a limit on the number of total or
independent claims that may be presented for examination in an
application. The Office proposed in the Claims Proposed Rule to revise
the practice for the examination of claims in an application as
follows: (1) The Office would 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; and (2) if the number of representative claims is greater
than ten, the Office would require the applicant to help focus
examination by submitting an examination support document covering all
of the representative claims. See Changes to Practice for the
Examination of Claims in Patent Applications, 71 FR at 61-69, 1302 Off.
Gaz. Pat. Office at 1329-35.
The Office received a substantial number of comments from the
public opposing the proposed "representative claims" examination
approach and suggesting that the Office should simply adopt a strategy
based upon whether an application contains more than a given number of
independent and total claims. As a result of the public comments on the
Claims Proposed Rule, the Office is not adopting the "representative
claims" examination approach.
Instead, this final rule provides that if the number of independent
claims is greater than five or the number of total claims is greater
than twenty-five, the applicant must help focus examination by
providing an examination support document covering all of the claims in
the application (whether in independent or dependent form) before the
issuance of a first Office action on the merits of an application. An
applicant may present up to five independent claims and twenty-five
total claims in an initial application and each continuation or
continuation-in-part application without providing either an
examination support document or justification, as long as those
applications are either prosecuted serially or contain patentably
distinct claims. Thus, an applicant may present up to fifteen
independent claims and seventy-five total claims to a single patentably
distinct invention via an initial application and two continuation or
continuation-in-part applications that are filed and prosecuted
serially without providing either an examination support document or a
justification. Furthermore, an applicant may present up to fifteen
independent claims and seventy-five total claims via a divisional
application and its two continuation applications without providing
either an examination support document or a justification, if the
Office issues a restriction requirement in the prior-filed application.
Thus, the change to the practice for examination of claims adopted in
this final rule avoids placing a limit on the number of total or
independent claims that may be presented for examination in an
application, but does require an applicant who presents more than five
independent claims or more than twenty-five total claims in an
application to help focus examination by providing additional
information to the Office in an examination support document.
If an applicant thinks fifteen independent claims or seventy-five
total claims to an invention is not sufficient, or if applicant wishes
to present more than five independent claims or twenty-five total
claims in any one application, then applicant has the option of
presenting as many independent and total claims as desired by providing
an examination support document. The examination support document will
assist the examiner in examining the application and determining the
patentability of a claimed invention by providing the most relevant
prior art and other useful information. Specifically, the examination
support document will assist the examiner in understanding the
invention and interpreting the claims before conducting a prior art
search. The examination support document will also assist the examiner
in evaluating the prior art cited by the applicant and in determining
whether a claim limitation has support in the original disclosure and
in any prior-filed application. An examination support document must be
filed before the issuance of a first Office action on the merits of an
application. This is so that the information concerning the invention
will be available when the Office begins the examination process, and
thus avoids the piecemeal examination that would result if the
examination support document were not provided until after the first
Office action on the merits in the application.
C. Changes to Practice for Patent Applications Containing Patentably
Indistinct Claims
The changes in this final rule also require that applicants provide
additional information to the Office when they file multiple
applications containing "conflicting" or patentably indistinct
claims. The rules of practice provided that "[w]here two or more
applications filed by the same applicant contain conflicting claims,
elimination of such claims from all but one application may be required
in the absence of good and sufficient reason for their retention during
pendency in more than one application." See 37 CFR 1.78(b) (2006).
This final rule provides that an applicant must identify other
pending applications or patents that are commonly owned, have a common
inventor, and have a claimed filing or priority date within two months
of the claimed filing or priority date of the application. This
requirement does not supplant an applicant's duty to bring other
applications that are "material to patentability" of an application
(e.g., applications containing patentably indistinct claims) to the
attention of the examiner. See Dayco Prod., Inc. v. Total
Containment, Inc., 329 F.3d 1358, 1365-69, 66 U.S.P.Q.2d 1801, 1806-08
(Fed. Cir. 2003); see also MPEP 2001.06(b). Thus, applicants are
cautioned against intentionally filing related applications outside of
this two-month window in an attempt to avoid the requirement to
identify other applications that are material to the patentability of
the application at issue. See Cargill, Inc. v. Canbra Foods, Ltd., 476
F.3d 1359, 1367-68, 81 U.S.P.Q.2d 1705, 1711 (Fed. Cir. 2007) (there is
no such thing as a good faith intent to deceive).
This final rule provides that if there are other pending
applications or patents that are commonly owned and have a common
inventor, substantial overlapping disclosures, and the same claimed
filing or priority date, the Office will presume that the applications
contain patentably indistinct claims. In such a situation, the
applicant must either rebut this presumption by explaining how the
applications contain patentably distinct claims, or submit the
appropriate terminal disclaimers and explain why two or more pending
applications containing "conflicting" or patentably indistinct claims
should be maintained.
The Office proposed a provision that if an application contains at
least one claim that is patentably indistinct from at least one claim
in one or more other applications or patents, the Office would (if
certain conditions were met) treat the independent claims and the
dependent claims designated for initial examination in the first
application and in each of such other applications or patents as
present in each of the applications for purposes of determining whether
the applicant would be required to submit an examination support
document. See Changes to Practice for the Examination of Claims in
Patent Applications, 71 FR at 64, 68, 1302 Off. Gaz. Pat. Office at
1331, 1334. This final rule provides that if multiple applications,
including applications having a continuity relationship, contain
patentably indistinct claims, the Office will treat the multiple
applications as a single application for purposes of determining
whether each of the multiple applications exceeds the five independent
claim and twenty-five total claim threshold. This provision is to
preclude an applicant from submitting multiple applications with claims
that are patentably indistinct, each with five or fewer independent
claims or twenty-five or fewer total claims, for the purposes of
avoiding the requirement to submit an examination support document in
compliance with 1.265. The Office, however, will not count the
claims in issued patents that contain patentably indistinct claims in
determining whether a pending application exceeds the five independent
claim and twenty-five total claim threshold. Nevertheless, those
patentably indistinct claims would still be subject to a double
patenting rejection.
D. Retention of First Action Final Practice and Changes in Second
Action Final Practice
The Office has a first action final rejection practice under which
the first Office action in a continuing application, or in the
prosecution of a request for continued examination, may be made final
under certain circumstances. See MPEP 706.07(b) and 706.07(h),
paragraph VIII. The Office proposed to eliminate this practice in
continuing applications under 35 U.S.C. 120, 121, or 365(c) and in
requests for continued examination under 35 U.S.C. 132(b) as
unnecessary in view of the proposed changes to continuing applications
and requests for continued examination practice that would permit an
applicant to file only one continuing application or request for
continued examination without any justification. See Changes to
Practice for Continuing Applications, Requests for Continued
Examination Practice, and Applications Containing Patentably Indistinct
Claims, 71 FR at 51, 1302 Off. Gaz. Pat. Office at 1321. This final
rule, however, provides that an applicant may file a request for
continued examination in either the initial application or either of
the two continuing applications without any justification. Therefore,
the Office is retaining its first action final rejection practice.
Applicants, however, are reminded that it would not be proper for the
Office to make a first Office action final in a continuing application
or after a request for continued examination if the application
contains material which was presented after final rejection or the
close of prosecution but was denied entry because: (1) new issues were
raised that required further consideration and/or search; or (2) the
issue of new matter was raised. See MPEP 706.07(b) and 706.07(h).
Thus, applicants may guard against first action final rejection in a
continuing application or after a request for continued examination by
first seeking entry of the amendment, argument, or new evidence under
1.116.
The Office is also not changing the final action practice for the
Office action following a submission under 1.129(a). See Changes
to the Transitional Procedures for Limited Examination After Final
Rejection in Certain Applications Filed Before June 8, 1995, 70 FR
24005 (May 6, 2005), 1295 Off. Gaz. Pat. Office 22 (Jun. 7, 2005)
(notice).
The Office is revising second action final practice as it pertains
to second or subsequent Office actions that include a new double
patenting rejection (either statutory or obviousness-type double
patenting). Double patenting can arise when a party (or parties to a
joint research agreement under the Cooperative Research and Technology
Enhancement Act of 2004 (CREATE Act), Public Law 108-453, 118 Stat.
3596 (2004)) has filed multiple patent applications containing
patentably indistinct claims. The applicant (or the owner of the
application) is in a far better position than the Office to determine
whether there are one or more other applications or patents containing
patentably indistinct claims. For this reason, when an applicant files
multiple applications that are substantially the same, the applicant is
responsible for assisting the Office in resolving potential double
patenting situations, rather than taking no action until faced with a
double patenting rejection. Thus, if an Office action must include a
double patenting rejection, it is because the applicant has not met his
or her responsibility to resolve the double patenting situation.
Therefore, the inclusion of a new double patenting rejection in a
second or subsequent Office action will not preclude the Office action
from being made final.
The Office is also revising second action final practice as it
pertains to second or subsequent Office actions that include a new
ground of rejection necessitated by a showing that a claim element that
does not use the phrase "means for" or "step for" is nevertheless a
means- (or step-) plus-function claim element under 35 U.S.C. 112, 6.
The Office revised the examination guidelines for means- (or step-)
plus-function claim elements under 35 U.S.C. 112, 6, in June of 2000.
See Supplemental Examination Guidelines for Determining the
Applicability of 35 U.S.C. 112, 6, 65 FR 38510 (June 21,
2000), 1236 Off. Gaz. Pat. Office 98 (July 25, 2000) (2000 Examination
Guidelines); see also Interim Supplemental Examination Guidelines for
Determining the Applicability of 35 U.S.C. 112, 6, 64 FR
41392 (July 30, 1999). The 2000 Examination Guidelines for means- (or
step-) plus-function claim elements under 35 U.S.C. 112, 6, have been
incorporated into the MPEP. See MPEP sections 2181-2184 (8th ed. 2001)
(Rev. 5, August 2006). The 2000 Examination Guidelines set forth a
three-prong procedure for determining whether a claim element is a
means- (or step-) plus-function claim element under
35 U.S.C. 112, 6. See Supplemental Examination Guidelines for
Determining the Applicability of 35 U.S.C. 112, 6, 65 FR at
38514, 1236 Off. Gaz. Pat. Office at 101. The 2000 Examination
Guidelines provide that if a claim element does not include the phrase
"means for" or "step for" as provided in the first prong of the
Office, the applicant has two options: (1) Amend the claim to include
the phrase "means for" or "step for"; or (2) show that even though
the phrase "means for" or "step for" is not used, the claim element
is written as a function to be performed and does not recite sufficient
structure, material, or acts which would preclude application of 35
U.S.C. 112, 6. See Supplemental Examination Guidelines for
Determining the Applicability of 35 U.S.C. 112, 6, 65 FR at
38514, 1236 Off. Gaz. Pat. Office at 101. To avoid any unnecessary
delay in the prosecution of the application, an applicant who wishes to
have a claim element treated under 35 U.S.C. 112, 6, should either
use the phrase "means for" or "step for" in the claim element or
provide the necessary showing before the examination of the application
begins so that the examiner can properly interpret the claims in the
application and make a patentability determination. Furthermore,
because submitting a showing is tantamount to an amendment of the claim
to include the phrase "means for" or "step for," a showing will be
treated as an amendment of the claim for second action final purposes.
Thus, the inclusion of a new rejection in a second or subsequent Office
action necessitated by a showing submitted by applicant will not
preclude the Office from making the second or subsequent Office action
final.
This final rule requires applicant to identify any claims in a
continuation-in-part application for which the subject matter is
disclosed in the manner provided by 35 U.S.C. 112, 1, in the prior-
filed application. See 1.78(d)(3) and the discussion of
1.78(d)(3). Any claim in the continuation-in-part application for which
the subject matter is not identified as being disclosed in the manner
provided by 35 U.S.C. 112, 1, in the prior-filed application will be
treated as entitled only to the actual filing date of the continuation-
in-part application, and will be subject to prior art based on the
actual filing date of the continuation-in-part application. To avoid
any unnecessary delay in the prosecution of the application, applicant
should provide the identification before the examiner begins to conduct
a prior art search. If the failure to identify the claims for which the
subject matter is disclosed in the manner provided by 35 U.S.C. 112,
1, in the prior-filed application causes the examiner to include a new
prior art rejection in a second or subsequent Office action, the
inclusion of the new prior art rejection will not preclude the Office
action from being made final.
Therefore, the Office is revising second action final practice to
provide that a second or any subsequent Office action on the merits may
be made final, except when the Office action contains a new ground of
rejection that is not: (1) Necessitated by applicant's amendment of the
claims, including amendment of a claim to eliminate unpatentable
alternatives; (2) necessitated by applicant's providing a showing that
a claim element that does not use the phrase "means for" or "step
for" is written as a function to be performed and does not otherwise
preclude application of 35 U.S.C. 112, 6; (3) based on information
submitted in an information disclosure statement filed during the
period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR
1.17(p); (4) based upon double patenting (statutory or obviousness-type
double patenting); or (5) necessitated by applicant's identification of
the claim or claims in a continuation-in-part application for which the
subject matter is disclosed in the manner provided by 35 U.S.C. 112,
1, in the prior-filed application. The provision in MPEP 904.02
that a search should cover the claimed subject matter and should also
cover the disclosed features which might reasonably be expected to be
claimed does not preclude an examiner from making the second or any
subsequent Office action on the merits final if the Office action
contains a new ground of rejection that was necessitated solely by
applicant's amendment of the claims to eliminate an unpatentable
alternative. An examiner cannot be expected to foresee whether or how
an applicant will amend a claim to overcome a rejection except in very
limited circumstances (e.g., where the examiner suggests how applicant
can overcome a rejection under 35 U.S.C. 112, 2).
II. Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, part 1, is amended as
follows:
Section 1.17 (patent application and reexamination processing
fees): Section 1.17(f) is amended to include a reference to: (1)
Petitions under 1.78(d)(1)(vi) for a continuing application not
provided for in 1.78(d)(1)(i) through (d)(1)(v); and (2)
petitions under 1.114(g) for a request for continued examination
not provided for in 1.114(f). See discussion of 1.78 and 1.114.
Section 1.26 (refunds): Section 1.26(a) is amended to add the
phrase "[e]xcept as provided in 1.117 or 1.138(d)" to the
sentence "[a] change of purpose after the payment of a fee, such as
when a party desires to withdraw a patent filing for which the fee was
paid, including an application, an appeal, or a request for an oral
hearing, will not entitle a party to a refund of such fee." The
"change of purpose" provision of 1.26(a) is directed to the
provision in 35 U.S.C. 42(d) authorizing a refund of "any fee paid by
mistake or any amount paid in excess of that required." 35 U.S.C.
42(d). Sections 1.117 and 1.138(d), however, are directed to the
provisions in 35 U.S.C. 41(a)(2) and (d)(1)(D) as amended by the
Consolidated Appropriations Act, 2005 (Consolidated Appropriations Act)
that permit the Office to develop procedures to refund search fees or
excess claims fees under certain limited conditions. See Public Law
108-447, 118 Stat. 2809 (2004). Section 1.26(b) is amended to change
"except as otherwise provided in this paragraph or in 1.28(a)"
to "except as otherwise provided in this paragraph, or in
1.28(a), 1.117(b), or 1.138(d)". This change is for
consistency with 1.117(b) and 1.138(d), which also specify
time periods within which certain refunds must be requested.
Section 1.52 (language, paper, writing, margins, compact disc
specifications): Section 1.52(d)(2) is amended to refer to 1.78(b)
concerning the requirements for claiming the benefit of a
provisional application in a nonprovisional application. Section
1.52(d)(2) is also amended to provide that if a provisional application
is filed in a language other than English and the benefit of such
provisional application is claimed in a nonprovisional application, an
English language translation of the non-English language provisional
application will be required in the provisional application. This
change conforms 1.52(d)(2) to the September 2005 revision to the
provisions in 1.78 for claiming the benefit of a provisional
application. See Provisions for Claiming the Benefit of a Provisional
Application With a Non-English Specification and Other Miscellaneous
Matters, 70 FR 56119, 56121, 56128 (Sept. 26, 2005), 1299 Off. Gaz. Pat.
Office 142, 143-44, 150 (Oct. 25, 2005) (final rule). With respect to
claiming the benefit of a provisional application that was filed in a
language other than English, 1.78(b)(5) now provides that: (1) If the
prior-filed provisional application was filed in a language other than
English and both an English-language translation of the prior-filed
provisional application and a statement that the translation is accurate
were not previously filed in the prior-filed provisional application,
applicant will be notified and given a period of time within which to file
the translation and the statement in the prior-filed provisional
application; (2) if the notice is mailed in a pending nonprovisional
application, a timely reply to such a notice must include the filing in
the nonprovisional application of either a confirmation that the
translation and statement were filed in the provisional application, or
an amendment or supplemental application data sheet withdrawing the
benefit claim, or the nonprovisional application will be abandoned; and
(3) the translation and statement may be filed in the provisional
application, even if the provisional application has become abandoned.
Section 1.53 (application number, filing date, and completion of
application): Section 1.53(b) and (c)(4) are amended to refer to
1.78, rather than specific paragraphs of 1.78. Section 1.53(b)(1)
is also amended to provide that continuation or divisional applications
naming an inventor not named in the prior application must be filed
under 1.53(b) (this provision was formerly in 1.53(b)(2)),
and to reference 1.78(a)(2) for the definition of a divisional
application and 1.78(a)(3) for the definition of a continuation
application. Section 1.53(b)(2) is amended to reference
1.78(a)(4) for the definition of a continuation-in-part application.
Section 1.75 (claims): Section 1.75(b) is amended to provide for
the revised practice for the examination of claims in an application.
Section 1.75(b) (introductory text) provides for the requirements of a
dependent claim. Section 1.75(b)(1) provides for the five independent
claim and twenty-five total claim threshold for invoking the
examination support document requirement. Section 1.75(b)(2) provides
for claims in dependent form that are effectively independent claims.
Section 1.75(b)(3) provides for situations in which an examination
support document has not been provided in an application that exceeds
the five independent claim and twenty-five total claim threshold.
Section 1.75(b)(4) provides that the total number of claims present in
all of the copending commonly owned applications that contain
patentably indistinct claims may not exceed the five independent claim
and twenty-five total claim threshold. Section 1.75(b)(5) provides that
claims withdrawn from consideration will not, unless they are
reinstated or rejoined, be taken into account in determining whether an
application exceeds the five independent claim and twenty-five total
claim threshold. Section 1.75(c) is amended to 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 claims counting
purposes.
Section 1.75(b) (introductory text) is amended to set forth the
existing provisions concerning dependent claims in 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." Section 1.75(b) (introductory text) is also amended
to clarify that a dependent claim is required to incorporate by
reference all the limitations of the previous claim to which it refers
and to specify a further limitation of the subject matter of the
previous claim. See Pfizer Inc. v. Ranbaxy Labs. Ltd., 437 F.3d 1284,
1292, 79 U.S.P.Q.2d 1583, 1589-90 (Fed. Cir. 2006) (a dependent claim
is required to include all the limitations of the claim from which it
depends and the failure to incorporate by reference all the limitations
is a violation of 35 U.S.C. 112, 4, and renders the dependent claim
invalid).
Section 1.75(b)(1) provides that an applicant must file an
examination support document in compliance with 1.265 that covers
each claim (whether in independent or dependent form) before the
issuance of a first Office action on the merits of the application if
the application contains or is amended to contain more than five
independent claims or more than twenty-five total claims. Section
1.75(b)(1) also provides that the application may not contain or be
amended to contain more than five independent claims or more than
twenty-five total claims if an examination support document in
compliance with 1.265 has not been filed before the issuance of a
first Office action on the merits of an application. The examination
support document in compliance with 1.265 is required to be filed
before the issuance of the first Office action on the merits of the
application because the information provided by the applicant in the
examination support document will assist the examiner in understanding
the invention of the application, determining the effective filing date
of each claim, interpreting the claims before a prior art search,
understanding the state of the art and the most closely related prior
art cited by the applicant, and determining the patentability of the
claims. Applicant is permitted to present more than five independent
claims or more than twenty-five total claims in a continuing
application, if the applicant files an examination support document in
compliance with 1.265 before the first Office action on the
merits of the continuing application, regardless of whether an
examination support document has been filed in the prior-filed
application.
Claims withdrawn from consideration under 1.141 through
1.146 or 1.499 as drawn to a non-elected invention or inventions
are not taken into account in determining whether an application
exceeds this five independent claim and twenty-five total claim
threshold. See 1.75(b)(5) and discussion of 1.75(b)(5).
Section 1.75(b)(2) concerns claims in dependent form that are
effectively independent claims. Section 1.75(b)(2) provides that a
claim that refers to another claim but does not incorporate by
reference all the limitations of the claim to which such claim refers
will be treated as an independent claim for fee calculation purposes
under 1.16 (or 1.492) and for purposes of 1.75(b).
The Office must treat such claims as independent claims because 35
U.S.C. 112, 4, provides (inter alia) that a dependent claim "shall
be construed to incorporate by reference all the limitations of the
claim to which it refers." See 35 U.S.C. 112, 4. For examples of
such claims, see: In re Thorpe, 777 F.2d 695, 696, 227 U.S.P.Q. 964,
965 (Fed. Cir. 1985) ("product by process" claim 44); In re Kuehl,
475 F.2d 658, 659, 177 U.S.P.Q. 250, 251 (C.C.P.A. 1973) (claim 6); and
Ex parte Rao, 1995 WL 1747720, *1 (BPAI 1998) (claim 8). Section
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 1.16 (or
1.492) and for purposes of 1.75(b). For examples of such
claims, see: Thorpe, 777 F.2d at 696, 227 U.S.P.Q. at 965 ("product by
process" claim 44); Ex parte Porter, 25 U.S.P.Q.2d 1144, 1145 (BPAI
1992) (claim 6); and Ex parte Blattner, 2 U.S.P.Q.2d 2047, 2047-48
(BPAI 1987) (claim 14).
Section 1.75(b)(3) provides that the applicant will be notified if
the application contains or is amended to contain more than five
independent claims or more than twenty-five total claims but the
applicant has not complied with the requirements set forth in
1.75(b)(1) or 1.75(b)(4) (e.g., an examination support document in
compliance with 1.265 has been omitted). Section 1.75(b)(3) also
provides that if the non-compliance appears to have been inadvertent,
the notice will set a two-month time period that is not extendable
under 1.136(a) within which, to avoid abandonment of the
application, the applicant must comply with the requirements set forth
in 1.75(b). Again, claims withdrawn from consideration under
1.141 through 1.146 or 1.499 as drawn to a non-elected
invention or inventions are not taken into account in determining
whether an application exceeds this five independent claim and twenty-
five total claim threshold. See 1.75(b)(5) and discussion of
1.75(b)(5).
If a notice under 1.75(b)(3) is mailed before the first
Office action on the merits of an application and it appears that the
omission of an examination support document was inadvertent, the notice
will set a two-month time period within which the applicant must: (1)
File an examination support document in compliance with 1.265
that covers each claim (whether in independent or dependent form); or
(2) amend the application such that it contains no more than five
independent claims and no more than twenty-five total claims. Section
1.75(b)(3) provides that this two-month time period is not extendable
under 1.136(a) and that the failure to reply to such a notice
will result in abandonment of the application. Due to the increase in
patent pendency that would result from the routine granting of
extensions in the situation in which an application contains or is
amended to contain more than five independent claims or more than
twenty-five total claims but the applicant has not complied with the
requirements set forth in 1.75(b)(1) or 1.75(b)(4) (e.g., an
examination support document in compliance with 1.265 has been
omitted), the Office is limiting extensions of this two-month time
period in 1.75(b)(3) to those for which there is sufficient cause
( 1.136(b)).
Once the Office issues a notice under 1.75(b)(3), the
applicant may not simply submit a suggested alternative requirement for
restriction under 1.142(c), but instead must: (1) File an
examination support document in compliance with 1.265 that covers
each claim (whether in independent or dependent form); or (2) amend the
application such that it contains no more than five independent claims
and no more than twenty-five total claims.
If an examination support document in compliance with 1.265
as required under 1.75(b) was not filed before the issuance of a
first Office action on the merits of an application, an amendment that
results in the application containing more than five independent claims
or more than twenty-five total claims will be treated as non-
responsive. Specifically, if the non-compliance with 1.75(b)
appears to have been inadvertent, the Office would give the applicant a
two-month time period that is not extendable under 1.136(a)
within which to provide an amendment that does not result in the
application containing more than five independent claims or more than
twenty-five total claims. See 1.135(c) ("[w]hen reply by the
applicant is a bona fide attempt to advance the application to final
action, and is substantially a complete reply to the non-final Office
action, but consideration of some matter or compliance with some
requirement has been inadvertently omitted, applicant may be given a
new time period for reply under 1.134 to supply the omission.").
Section 1.75(b)(4) provides 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
pending nonprovisional applications; and (2) the nonprovisional
application and the one or more other pending nonprovisional
applications either are owned by the same person or are subject to an
obligation of assignment to the same person. In this situation,
1.75(b)(4) provides that the Office will treat the claims in the first
nonprovisional application and in each of such other pending
nonprovisional applications as being present in each of the pending
nonprovisional applications for purposes of 1.75(b). That is, if
the conditions specified in 1.75(b)(4) are present, the Office
will treat each such nonprovisional application as having the total
number of claims present in all of such applications (and not just the
claim that is patentably indistinct) for purposes of determining
whether an examination support document is required by 1.75(b).
For example: If application "A" contains only one claim that is
patentably indistinct from the claims in application "B", application
"A" and application "B" are owned by the same company, and each
application contains three independent claims and twenty total claims,
the Office will treat each application as having six independent claims
and forty total claims in determining whether each application exceeds
the five independent claim and twenty-five total claim threshold set
forth in 1.75(b). In this example, an examination support
document would be required in each application before the issuance of a
first Office action on the merits of the application. To avoid the
provisions of 1.75(b)(4), applicant may present all of the
patentably indistinct claims in application "B" by canceling the
patentably indistinct claim from application "A". As discussed
previously, 1.75(b)(4) is to preclude an applicant from
submitting multiple applications to the same subject matter (with
claims that are patentably indistinct), each with five or fewer
independent claims or twenty-five or fewer total claims, for the
purpose of avoiding the requirement to submit an examination support
document in compliance with 1.265.
Under 1.75(b)(4), the Office will count the claims in the
copending nonprovisional applications containing patentably indistinct
claims (including applications having a continuity relationship) but
not in issued patents containing patentably indistinct claims, in
determining whether each such application exceeds the five independent
claim or twenty-five total claim threshold for invoking the examination
support document requirement. An applicant may present up to five
independent claims and twenty-five total claims in an initial
application and each continuing application, provided that continuing
applications that contain patentably indistinct claims are not
prosecuted in parallel with the initial application or each other.
Thus, an applicant may present up to fifteen independent claims and
seventy-five total claims to a single invention via an initial
application and two continuing applications that are filed and
prosecuted serially without providing either an examination support
document or a justification. In addition, an applicant may prosecute a
divisional application (an application containing claims that are
patentably distinct from the claims to the invention prosecuted in the
initial application) in parallel with the initial application or its
continuation or continuation-in-part applications without the claims in
the divisional application being taken into account in determining
whether the initial application or its continuation or continuation-in-
part applications exceed the five independent claim or twenty-five total
claim threshold for invoking the examination support document requirement.
Section 1.75(b)(4) also provides that the total number of claims
present in all of such copending nonprovisional applications containing
patentably indistinct claims may not exceed five independent claims or
twenty-five total claims unless an examination support document in
compliance with 1.265 is filed before the issuance of a first
Office action on the merits of the application containing patentably
indistinct claims.
The provisions of 1.75(b)(4) do not depend upon the relative
filing dates of the nonprovisional application and the one or more
other nonprovisional applications. The provisions of 1.75(b)(4)
apply regardless of whether the filing dates of the applications are
the same, are within two months of each other (cf. 1.78(f)(1) and
(f)(2)), or are not within two months of each other. In other words,
the provision of 1.75(b)(4) does not depend on the filing dates
of the respective applications. In addition, the provisions of
1.75(b)(4) are applicable regardless of any continuity relationship
between the applications (e.g., the provision applies if a parent
application is still pending at the time the child application is under
examination). For applications having a continuity relationship, the
prior application must be pending at the time the continuing
application is filed. See 35 U.S.C. 120 (requires that a continuing
application be filed before the patenting or abandonment of or
termination of proceedings on the prior application). The Office,
however, will treat the application as no longer pending for purposes
of 1.75(b)(4) if: (1) A notice of allowance is issued, unless the
application is withdrawn from issue ( 1.313); (2) the Office
recognizes the application is abandoned; (3) a notice of appeal to the
U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. 141 is
filed, unless the appeal is terminated; or (4) a civil action under 35
U.S.C. 145 or 146 is commenced, unless the civil action is terminated.
Section 1.75(b)(4) as adopted in this final rule differs from
proposed 1.75(b)(4) in that it does not provide that the Office
may require elimination of the patentably indistinct claims from all
but one of the applications. Such a provision would be a substantial
duplicate of 1.78(f)(3) as adopted in this final rule, which
provides that if the conditions set forth in 1.75(b)(4) exist,
the Office may require elimination of the patentably indistinct claims
from all but one of the applications in the absence of good and
sufficient reason for there being two or more such nonprovisional
applications containing patentably indistinct claims.
Section 1.75(b)(5) provides that claims withdrawn from
consideration under 1.141 through 1.146 or 1.499 as
drawn to a non-elected invention or inventions will not, unless they
are reinstated or rejoined, be taken into account in determining
whether an application exceeds the five independent claim and twenty-
five total claim threshold set forth in 1.75(b)(1), (b)(3),
and (b)(4). Thus, claims withdrawn from consideration as the result of
an Office-initiated requirement under 1.142, 1.146, or 1.499
(regardless of whether the election is with or without traverse), or as
the result of the acceptance of a suggested restriction requirement
under 1.142(c), are not taken into account in determining whether
an application exceeds the five independent claim and twenty-five total
claim threshold. In addition, claims withdrawn from consideration in an
application (e.g., the initial application) as the result of either an
Office-initiated requirement under 1.142, 1.146, or 1.499, or the
acceptance of a suggested restriction requirement under 1.142(c),
are not taken into account in determining whether a copending
application (e.g., a continuation application of the initial
application) contains a claim that is patentably indistinct from a
claim in such application for purposes of 1.75(b)(4).
Section 1.142(c) as adopted in this final rule provides that the
applicant may submit a suggested requirement for restriction if two or
more independent and distinct inventions are claimed in the
application. Section 1.142(c) further provides that any suggested
requirement for restriction must be filed before the earlier of the
first Office action on the merits or any Office action that contains a
requirement to comply with the requirement of unity of invention under
PCT Rule 13 or a requirement for restriction (including an election of
species) under 35 U.S.C. 121 in the application. Section 1.142(c)
provides that any suggested requirement for restriction must also be
accompanied by an election without traverse of an invention to which
there are no more than five independent claims and no more than twenty-
five total claims, and identify the claims to the elected invention. If
the applicant submits a suggested restriction requirement, the
suggested restriction requirement is accepted, and there are five or
fewer independent claims and twenty-five or fewer total claims to the
elected invention (as required by 1.142(c)), the Office will
simply treat the non-elected claims as withdrawn from consideration and
proceed to act on the application (assuming the application is
otherwise in condition for action). The Office action will set out the
requirement for restriction under 1.141(a), e.g., in the manner
that an Office action on the merits would contain a written record of a
requirement for restriction previously made by telephone. See MPEP
section 810. Applicants are reminded, however, that the Office may
refund excess claims fees only for claims that are canceled prior to
the issuance of a first Office action on the merits of the application.
See 35 U.S.C. 41(a)(2) ("[t]he Director may, by regulation, provide
for a refund of any part of the fee specified in [35 U.S.C. 41(a)(2)]
for any claim that is canceled before an examination on the merits, as
prescribed by the Director, has been made of the application under [35
U.S.C.] 131").
If the applicant files a suggested requirement for restriction in
an application containing more than five independent claims or more
than twenty-five total claims, the applicant will also be notified if
the suggested restriction requirement is not accepted. The refusal to
accept a suggested requirement for restriction may result in the
examiner making a different restriction requirement or making no
restriction requirement.
If the examiner makes a restriction requirement (which includes an
election of species requirement) different from the suggested
restriction requirement, the applicant will be notified of the
restriction requirement. The applicant will be given a two-month time
period that is not extendable under 1.136(a) within which the
applicant must make an election consistent with the Office-issued
restriction requirement in order to avoid abandonment of the
application. Once the Office issues a requirement for restriction, the
applicant may not simply submit a suggested alternative requirement for
restriction under 1.142(c). Instead, the applicant must make an
election (with or without traverse) responsive to the Office-issued
requirement for restriction. If an application subject to an Office-
issued requirement for restriction contains more than five independent
claims or more than twenty-five total claims, the reply must also
either: (1) Amend the application to contain no more than five
independent claims and no more than twenty-five total claims to the
elected invention and/or species; or (2) include an examination support
document in compliance with 1.265 that covers
each claim (whether in independent or dependent form) pending in the
application.
If the examiner does not make a restriction requirement, the
applicant will simply be given a notice under 1.75(b)(3). That
notice will set a two-month time period that is not extendable under
1.136(a) within which, to avoid abandonment of the application,
the applicant must: (1) Amend the application to contain no more than
five independent claims and no more than twenty-five total claims; or
(2) file an examination support document in compliance with 1.265
that covers each claim (whether in independent or dependent form)
pending in the application. See 1.75(b)(3).
Section 1.75(b)(5) also provides that claims reinstated (e.g., as a
result of a request for reconsideration of the requirement) or rejoined
(e.g., upon allowance of a generic claim) in the application are taken
into account in determining whether an application exceeds the five
independent claim and twenty-five total claim threshold. As discussed
previously, unless an examination support document in compliance with
1.265 was filed before the issuance of a first Office action on
the merits of an application, the application must remain at or under
the five independent claim and twenty-five total claim threshold.
Therefore, if an examination support document was not filed before the
issuance of a first Office action on the merits of the application, and
the reinstatement or rejoinder of non-elected claims results in the
application containing more than five independent claims or more than
twenty-five total claims, the Office will give the applicant a two-
month time period within which to amend the application to contain five
or fewer independent claims and twenty-five or fewer total claims. See
1.75(b)(3). This two-month time period is not extendable under
1.136(a). The failure to file such an amendment will result in
abandonment of the application.
Since claims reinstated or rejoined in the application are taken
into account in determining whether an application exceeds the five
independent claim and twenty-five total claim threshold, applicants
cannot rely upon a requirement for restriction to avoid submitting an
examination support document before the issuance of a first Office
action on the merits of an application. This is especially true where:
(1) The applicant traverses the requirement for restriction; (2) the
requirement for restriction may be conditional, such as a requirement
for election of species in an application that contains a claim that is
generic to all of the claimed species (hereafter "generic claim")
(see MPEP section 809), or a requirement for restriction in an
application that contains a linking claim (e.g., a subcombination claim
linking plural combinations); or (3) the applicant plans to request
rejoinder of the claims to the non-elected invention (see MPEP
821.04 et seq.). Thus, applicants are advised to file an examination
support document in the application before the first Office action on
the merits if they anticipate the occurrence of any of the
aforementioned three situations. Furthermore, applicants cannot rely
upon the requirement for restriction to file a divisional application
because the Office will withdraw the requirement for restriction,
including an election of species, if the non-elected claims are
reinstated or rejoined.
Applicant is not permitted to file a divisional application of a
prior-filed application that is no longer subject to a restriction
requirement. Under 1.78(a)(2) and 1.78(d)(1)(ii), the prior-filed
application to which a divisional application claims the benefit must
be subject to a requirement to comply with the requirement of unity of
invention under PCT Rule 13 or a requirement for restriction under 35
U.S.C. 121. Sections 1.78(a)(2) and 1.78(d)(1)(ii) also require a
divisional application to contain only claims directed to a non-elected
invention that has not been examined.
For an application that contains a generic claim in which a
requirement for an election of species has been made, applicants should
conclude prosecution (in the initial application and its continuation
or continuation-in-part applications), including exhaustion of any
available appeals, as to the generic claim before ever filing a
divisional application to a non-elected species. If applicant no longer
wants to pursue the generic claim, applicant may file a divisional
application directed to a non-elected species. If an applicant files a
divisional application directed to a non-elected species, applicant
should: (1) Cancel the claims to the non-elected species and the
generic claim in the prior-filed application before rejoinder or
reinstatement occurs; (2) not present the non-elected claims and the
generic claim in any continuation or continuation-in-part application
of the initial application; and (3) not present the generic claim in
the divisional application or any other continuation application of the
divisional application (because the generic claim has been examined in
the initial application and it is patentably indistinct from the claims
of the non-elected species).
When an application contains a generic claim and the examiner makes
a provisional restriction requirement, requiring an election of species
for initial search and examination purposes, the applicant must elect a
single species. (The requirement is provisional because the restriction
will be withdrawn upon allowance of the generic claim.) The examiner
will determine the patentability of the elected species and generic
claim. Upon the allowance of the generic claim, the provisional
restriction requirement will be withdrawn, as explained above. The
claims of the non-elected species then will be rejoined. The Office
will count the rejoined claims together with the other pending claims
to determine whether the application exceeds the five independent claim
and twenty-five total claim threshold set forth 1.75(b)(1). See
1.75(b)(5). If the application contains more than five
independent claims and twenty-five total claims (counting the rejoined
claims) and the applicant did not file an examination support document
in compliance with 1.265 before the issuance of a first Office
action on the merits in the application, then the applicant must amend
the application to contain no more than five independent claims and no
more than twenty-five total claims. See 1.75(b)(1). Therefore,
applicants cannot rely upon a provisional requirement for restriction
to avoid submitting an examination support document before the issuance
of the first Office action on the merits in the application.
Furthermore, upon the allowance of a claim that is generic to all
of the claimed species (either in the initial application or any
continuing application), the application is no longer subject to a
requirement to comply with the requirement of unity of invention under
PCT Rule 13 or a requirement for restriction under 35 U.S.C. 121. In
such a situation, if applicant had filed a "divisional" application
to the non-elected species following the provisional restriction in the
prior-filed application, that "divisional" application would no
longer be proper under 1.78(a)(2) and 1.78(d)(1)(ii). This
is because the "divisional" application would not meet the conditions
set forth in 1.78(a)(2) and 1.78(d)(1)(ii). If applicant
wishes to maintain the application, then applicant must delete or
correct the benefit claim to indicate that the application is a
continuation application, provided the requirements set forth in
1.78(d)(1)(i) can be satisfied. In such case, the Office will treat the
application as one of the two continuation applications of the prior-filed
application permitted under 1.78(d)(1)(i). But, if the prior-filed
application already has its benefit claimed in two other nonprovisional
applications, applicant must delete the benefit claim in the
application. See 1.78(d)(1)(i). Therefore, applicant is cautioned
not file a divisional application drawn to a non-elected species if a
generic claim is pending in the initial application or any continuing
application of the initial application and could be found allowable.
When an application subject to an election of species is allowed
with no claim that is generic to all of the claimed species being found
to have been allowable, the applicant will be notified that the Office
considers the requirement that the application be restricted to a
single species to be final. At that point, the applicant may cancel the
claims to the non-elected species and the generic claim in the prior-
filed application and file a divisional application in accordance with
1.78(d)(1)(ii) to the non-elected species. However, if the
applicant later files a continuing application of the initial
application or the divisional application presenting one or more
generic claims in such later application, the Office will consider the
requirement that the initial application be restricted to a single
species to no longer be final. Should that occur, the "divisional"
application directed to the non-elected species would not be proper
under 1.78(a)(2) and 1.78(d)(1)(ii) for the reasons
explained above. Thus, applicants should conclude prosecution,
including exhaustion of any available appeals, as to the generic claim
before ever filing a divisional application to a non-elected species.
In other words, applicants cannot rely upon a requirement that an
application containing a generic claim will be restricted to a single
species to permit filing one or more divisional applications until the
applicant has concluded prosecution with respect to any generic claims.
Under the Office's rejoinder practice, an applicant may request
rejoinder of claims to a non-elected invention that depend from or
otherwise require all the limitations of an allowable claim. See MPEP
821.04 et seq. This "rejoinder" practice was developed in light
of the Federal Circuit's decisions in In re Ochiai, 71 F.3d 1565, 37
U.S.P.Q.2d 1127 (Fed. Cir. 1995), and In re Brouwer, 77 F.3d 422, 37
U.S.P.Q.2d 1663 (Fed. Cir. 1996), and the enactment of 35 U.S.C. 103(b)
in The Biotechnology Process Act of 1995 (Pub. L. 104-41, 109 Stat. 351
(1995)). See Guidance on Treatment of Product and Process Claims in
light of In re Ochiai, In re Brouwer, and 35 U.S.C. 103(b), 1184 Off.
Gaz. Pat. Office 86 (Mar. 26, 1996). Applicants may retain claims to a
non-elected invention in an application for possible rejoinder in the
event of the allowance of a claim to the elected invention. However, as
discussed previously, the Office will count rejoined claims towards the
five independent claim and twenty-five total claim threshold in
1.75(b)(1). See 1.75(b)(5). If applicant cancels all of the
claims directed to a non-elected invention before rejoinder occurs and
files a divisional application, the restriction requirement will not be
withdrawn and the non-elected process claims that are now canceled will
not be rejoined. This will preserve applicant's rights under 35 U.S.C.
121 and 1.78(d)(1)(ii). See MPEP 821.04(b).
Section 1.75(c) is amended to provide for multiple dependent claims
only. Dependent claims are now provided for in 1.75(b). Section
1.75(c) further provides that multiple dependent claims and claims that
depend 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 1.75(b) (as well as 1.16 or
1.492).
The changes to 1.75 are applicable to any application
(including any reissue application) filed under 35 U.S.C. 111(a) on or
after November 1, 2007, and to any nonprovisional application entering
the national stage after compliance with 35 U.S.C. 371 on or after
November 1, 2007, as well as to any application (including any reissue
application) in which a first Office action on the merits ( 1.104)
was not mailed before November 1, 2007. The Office will provide an
applicant who filed a nonprovisional application under 35 U.S.C. 111(a)
before November 1, 2007, or a nonprovisional application that entered
the national stage after compliance with 35 U.S.C. 371 before November
1, 2007, and who would be affected by the changes in the final rule,
with an opportunity to submit: (1) An examination support document
under 1.265; (2) a new set of claims such that the application
contains five or fewer independent claims and twenty-five or fewer
total claims; or (3) a suggested restriction requirement under
1.142(c). Specifically, the Office will issue a notice setting a two-
month time period that is extendable under 1.136(a) or (b) within
which the applicant must exercise one of these options in order to
avoid abandonment of the application. The Office, however, may combine
such a notice with a requirement for restriction, in which case the
applicant must make an election responsive to the restriction
requirement and, if there are more than five independent claims or more
than twenty-five total claims drawn to the elected invention, the
applicant must also: (1) File an examination support document in
compliance with 1.265; or (2) amend the application such that it
contains five or fewer independent claims and twenty-five or fewer
total claims drawn to the elected invention. Thus, if such a notice is
combined with a requirement for restriction, the applicant does not
have the option of replying to such notice with a suggested restriction
requirement under 1.142(c).
With respect to the application of the changes to 1.75 in
this final rule to a reissue application, an examination support
document under 1.265 will not be required pursuant to 1.75(b)
in a reissue application if the reissue application does not
seek to change the claims in the patent being reissued. A change in the
claims in the patent being reissued is sought either by an amendment to
or addition of a claim or claims, or by an amendment to the
specification which changes a claim or claims.
Section 1.76 (application data sheet): Section 1.76(b)(5) is
amended to refer to 1.78(b)(3) and (d)(3) for consistency
with the changes to 1.78. Section 1.76(b)(5) is also amended to
clarify that the relationship of the applications is not required for a
benefit claim under 35 U.S.C. 119(e) and to delete "the status
(including patent number if available)". Such information is not
necessary for claiming the benefit of a prior-filed application under
35 U.S.C. 119(e), 120, 121, or 365(c).
Section 1.78 (claiming benefit of earlier filing date and cross-
references to other applications): Section 1.78 is reorganized as
follows: (1) 1.78(a) defines "continuing application",
"continuation application", "divisional application", and
"continuation-in-part application"; (2) 1.78(b) contains
provisions relating to claims under 35 U.S.C. 119(e) for the benefit of
a prior-filed provisional application; (3) 1.78(c) contains
provisions relating to delayed claims under 35 U.S.C. 119(e) for the
benefit of a prior-filed provisional application; (4) 1.78(d)
contains provisions relating to claims under 35 U.S.C. 120, 121, or
365(c) for the benefit of a prior-filed nonprovisional or international
application; (5) 1.78(e) contains provisions relating to delayed
claims under 35 U.S.C. 120, 121, or 365(c) for
the benefit of a prior-filed nonprovisional or international
application; (6) 1.78(f) contains provisions relating to
applications naming at least one inventor in common and containing
patentably indistinct claims; (7) 1.78(g) contains provisions
relating to applications or patents under reexamination naming
different inventors and containing patentably indistinct claims; (8)
1.78(h) contains provisions pertaining to the treatment of
parties to a joint research agreement under the CREATE Act; and
1.78(i) provides that the time periods set forth in 1.78 are not
extendable.
Section 1.78(a)(1) defines a "continuing application" as a
nonprovisional application or international application designating the
United States of America that claims the benefit under 35 U.S.C. 120,
121, or 365(c) of a prior-filed nonprovisional application or
international application designating the United States of America.
Section 1.78(a)(1) provides that an application that does not claim the
benefit under 35 U.S.C. 120, 121, or 365(c) of a prior-filed
application, is not a continuing application even if the application
claims the benefit under 35 U.S.C. 119(e) of a provisional application,
claims priority under 35 U.S.C. 119(a)-(d) or 365(b) to a foreign
application, or claims priority under 35 U.S.C. 365(a) or (b) to an
international application designating at least one country other than
the United States of America. A continuing application must be a
continuation application, a divisional application, or a continuation-
in-part application. See MPEP 201.11 ("To specify the
relationship between the applications, applicant must specify whether
the application is a continuation, divisional, or continuation-in-part
of the prior application. Note that the terms are exclusive. An
application cannot be, for example, both a continuation and a
divisional or a continuation and a continuation-in-part of the same
application.").
Section 1.78(a)(2) defines a "divisional application" as a
continuing application that discloses and claims only an invention or
inventions that were disclosed and claimed in a prior-filed
application, but were subject to a requirement to comply with the
requirement of unity of invention under PCT Rule 13 or a requirement
for restriction under 35 U.S.C. 121 in the prior-filed application, and
were not elected for examination and were not examined in any prior-
filed application. This definition is more precise than the definition
of "divisional application" currently found in MPEP 201.06.
MPEP 201.06 defines a divisional application as an application
for an independent and distinct invention, which discloses and claims
only subject matter that was disclosed in the prior-filed
nonprovisional application. Section 1.78(a)(2), however, limits the
definition of "divisional application" to an application that claims
only an invention or inventions that were subject to a requirement to
comply with the requirement of unity of invention under PCT Rule 13 or
a requirement for restriction under 35 U.S.C. 121 in the prior-filed
application and not elected for examination and not examined in any
prior-filed application. See 35 U.S.C. 121 ("[i]f two or more
independent and distinct inventions are claimed in one application, the
Director may require the application to be restricted to one of the
inventions [and i]f the other invention is made the subject of a
divisional application which complies with the requirements of [35
U.S.C.] 120 * * *."). The Office will revise the definition of
divisional application in MPEP 201.06 in the next revision of the
MPEP. An application that claims the benefit of a prior-filed
divisional application as defined in 1.78(a)(2), and claims the
same patentable invention as the prior-filed divisional application,
would not be a divisional application as defined by 1.78(a)(2).
Instead, such an application would be a continuation application.
Section 1.78(a)(3) defines a "continuation application" as a
continuing application as defined in 1.78(a)(1) that discloses
and claims only an invention or inventions that were disclosed in the
prior-filed application. See MPEP 201.07 (defines a continuation
application as an application that discloses (or discloses and claims)
only subject matter that was disclosed in the prior-filed
nonprovisional application).
Section 1.78(a)(4) defines a "continuation-in-part application"
as a continuing application as defined in 1.78(a)(1) that
discloses subject matter that was not disclosed in the prior-filed
application. See MPEP 201.08 (a continuation-in-part repeats some
substantial portion or all of the earlier nonprovisional application
and adds matter not disclosed in the prior-filed nonprovisional
application).
Section 1.78(b) addresses claims under 35 U.S.C. 119(e) for the
benefit of a prior-filed provisional application. Under 35 U.S.C.
119(e)(1), a provisional application must disclose the invention
claimed in at least one claim of the later-filed application in the
manner provided by 35 U.S.C. 112, 1, for the later-filed application
to receive the benefit of the filing date of the provisional
application. See New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298
F.3d 1290, 1294, 63 U.S.P.Q.2d 1843, 1846 (Fed. Cir. 2002) (for a
nonprovisional application to actually receive the benefit of the
filing date of the provisional application, "the specification of the
provisional [application] must `contain a written description of the
invention and the manner and process of making and using it, in such
full, clear, concise, and exact terms,' 35 U.S.C. 112 1, to enable an
ordinarily skilled artisan to practice the invention claimed in the
nonprovisional application"). Section 1.78(b), however, does not also
state (as did former 1.78(a)(4)) that the provisional application
must disclose the invention claimed in at least one claim of the later-
filed application in the manner provided by 35 U.S.C. 112, 1, because
it is not necessary for the rules of practice to restate provisions of
a statute.
Section 1.78(b)(1) provides that the nonprovisional application or
international application designating the United States of America must
be filed not later than twelve months after the date on which the
provisional application was filed, and that this twelve-month period is
subject to 35 U.S.C. 21(b) and 1.7(a). 35 U.S.C. 21(b) and 1.7(a)
provide that when the day, or the last day, for taking any
action (e.g., filing a nonprovisional application within twelve months
of the date on which the provisional application was filed) or paying
any fee in the Office falls on Saturday, Sunday, or a Federal holiday
within the District of Columbia, the action may be taken, or fee paid,
on the next succeeding secular or business day. Section 1.78(b)
otherwise contains the provisions of former 1.78(a)(4) and
(a)(5).
Sections 1.78(b)(2) through (b)(5) contain the provisions of former
1.78(a)(4) and (a)(5). Section 1.78(c) contains provisions relating to
delayed claims under 35 U.S.C. 119(e) for benefit of prior-filed
provisional applications. Section 1.78(c) contains the provisions of
former 1.78(a)(6).
Section 1.78(d) contains provisions relating to claims under 35
U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed
nonprovisional or international application.
Section 1.78(d)(1) provides conditions under which an application
may claim the benefit under 35 U.S.C. 120, 121, or 365(c) and
1.78 of a prior-filed nonprovisional application or international
application designating the United States of America. Section
1.78(d)(1) also provides that the Office will refuse to enter, or will
delete if present, any specific reference to a prior-filed application that
is not permitted by 1.78(d)(1). If the claim for the benefit of a prior-
filed nonprovisional application or international application designating
the United States of America is not permitted by 1.78(d)(1), the Office
will refuse benefit. Section 1.78(d) also provides that the entry of or
failure to delete a specific reference to a prior-filed application that is
not permitted by 1.78(d)(1) does not constitute a waiver of the
provisions of 1.78(d)(1). The grant of a petition under 1.78(d)(1)(vi)
or waiver of a requirement of 1.78(d)(1) would be only by an explicit
decision by an official who has been delegated the authority to decide such
a petition or waiver. It would not occur by implication due to the entry of
or failure to delete a specific reference to a prior-filed application that
is not permitted by 1.78(d)(1).
These provisions of 1.78(d)(1) were included in the proposed
changes to 1.78(d)(3). See Changes to Practice for Continuing
Applications, Requests for Continued Examination Practice, and
Applications Containing Patentably Indistinct Claims, 71 FR at 54, 60,
1302 Off. Gaz. Pat. Office at 1323, 1328.
Section 1.78(d)(1)(i) provides for continuation applications or
continuation-in-part applications that do not claim the benefit of a
divisional application (either directly or indirectly). Section
1.78(d)(1)(i) permits such a continuation application or continuation-
in-part application of a prior-filed nonprovisional application or
international application designating the United States of America if:
(1) The application is a continuation application as defined in
1.78(a)(3) or a continuation-in-part application as defined in
1.78(a)(4) that claims the benefit under 35 U.S.C. 120, 121, or 365(c)
of no more than two prior-filed applications; and (2) any application
whose benefit is claimed under 35 U.S.C. 120, 121, or 365(c) in such
nonprovisional application has its benefit claimed in no more than one
other nonprovisional application. This does not include any
nonprovisional application that satisfies the conditions set forth in
1.78(d)(1)(ii), (d)(1)(iii) or (d)(1)(vi).
Section 1.78(d)(1)(i) permits an applicant to continue prosecution
of an application via two continuation applications (in parallel or
serially), a continuation application and a continuation-in-part
application (in parallel or serially), or two continuation-in-part
applications (in parallel or serially). Applicants choosing to file
applications (whether continuing or non-continuing) in parallel are
reminded that 1.75(b)(4) provides that, if certain conditions are
met, the Office will treat each such application as having the total
number of claims present in all of such applications for purposes of
determining whether an examination support document is required by
1.75(b). See also 1.78(f) concerning additional provisions
that are applicable if there are multiple applications that have the
same claimed filing or priority date, substantial overlapping
disclosure, a common inventor, and common assignee.
If an application is identified as a continuation-in-part
application, however, 1.78(d)(3) provides that the applicant must
identify the claim or claims in the continuation-in-part application
for which the subject matter is disclosed in the manner provided by 35
U.S.C. 112, 1, in the prior-filed application. See discussion of
1.78(d)(3). Any claims in the continuation-in-part application
that are not identified under 1.78(d)(3) as supported by the
prior-filed application will be subject to prior art based on the
actual filing date of the continuation-in-part application.
For a continuation-in-part application that contains one or more
claims for which the subject matter is not disclosed in the manner
provided by 35 U.S.C. 112, 1, in the prior-filed application,
1.78(d)(1)(i) will permit an applicant to continue prosecution of the
claims that are directed solely to subject matter added in such
continuation-in-part application via two continuation applications (or
a continuation application and a continuation-in-part application, or
two continuation-in-part applications). However, the "additional"
continuation or continuation-in-part applications cannot claim the
benefit of the prior-filed application relative to the first
continuation-in-part application. The subject matter of at least one
claim of a later-filed application must be disclosed in the prior-filed
application in the manner provided by 35 U.S.C. 112, 1, for the
later-filed application to actually receive the benefit of the filing
date of the prior-filed application under 35 U.S.C. 120. See
Studiengesellschaft Kohle m.b.H. v. Shell Oil Co., 112 F.3d 1561, 1564-
65, 42 U.S.P.Q.2d 1674, 1677-78 (Fed. Cir. 1997). In addition, the term
of any resulting patent will be measured under 35 U.S.C. 154(a)(2) from
the filing date of the prior-filed application, even if the later-filed
application never receives any benefit from the prior-filed
application. See Abbott Labs. v. Novopharm Ltd., 104 F.3d 1305, 1309,
41 U.S.P.Q.2d 1535, 1537 (Fed. Cir. 1997) (rejecting patentee's
argument that it should not be bound by the filing date of the prior-
filed application because the later-filed application never received
any actual benefit from the prior-filed application). Thus, the Office
will not require that such "additional" continuation or continuation-
in-part applications contain a showing that all of the claims are
directed solely to subject matter added in the first continuation-in-
part application. Rather, 1.78(d)(1)(i) permits the
"additional" continuation or continuation-in-part application to
claim the benefit of the first continuation-in-part application, but
does not permit the "additional" continuation or continuation-in-part
application to also claim the benefit of the prior-filed initial
application (the prior-filed application relative to the first
continuation-in-part application). For example, consider an applicant
who files: (1) An initial application "A"; (2) a first continuation-
in-part application "B" that claims the benefit of application "A";
(3) a second continuation (or continuation-in-part) application "C"
that claims the benefit of applications "B" and "A"; and (4) an
additional continuation (or continuation-in-part) application "D"
that claims the benefit of applications "C" and "B". Under
1.78(d)(1)(i), application "D" may claim the benefit of application
"C" and continuation-in-part application "B", but may not claim any
benefit of application "A" (except as permitted under
1.78(d)(1)(vi)).
Applicants are permitted to file two continuation or continuation-
in-part applications ( 1.78(d)(1)) and one request for continued
examination ( 1.114) without any justification. The provisions of
1.78(d)(1) are independent of the provisions of 1.114.
Therefore, the filing of a request for continued examination does not
preclude an applicant from filing two continuation or continuation-in-
part applications. In addition, an applicant may not agree to forgo a
continuation application (or continuation-in-part application) to
obtain a second or third request for continued examination, nor can an
applicant agree to forgo a request for continued examination in
exchange for a third continuation or continuation-in-part application.
For example, an applicant cannot file a second request for continued
examination without any justification instead of filing one of the two
permitted continuation applications; and an applicant cannot file three
continuation applications instead of filing a request for continued
examination. Of course, applicant may seek by petition a third or
subsequent continuation or continuation-in-part application or a second
or subsequent request for continued examination.
The Office, however, is implementing an optional streamlined
continuation application procedure under which an applicant may request
to have a continuation application filed on or after November 1, 2007,
placed on an examiner's amended (Regular Amended) docket. The examiner
will normally pick up for action a continuation application that has
been placed on the examiner's amended (Regular Amended) docket faster
(e.g., within a few months from the date the application is docketed)
than an application placed on the examiner's new continuing application
(New Special) docket. The following conditions must be met for the
continuation application to be placed on an examiner's amended (Regular
Amended) docket rather than on the new continuing application (New
Special) docket: (1) The application must disclose and claim only an
invention or inventions that were disclosed and claimed in the prior-
filed application; (2) the applicant must agree that any election in
response to a requirement to comply with the requirement of unity of
invention under PCT Rule 13 or a requirement for restriction under 35
U.S.C. 121, including an election of species requirement, in the prior-
filed application carries over to the continuation application; (3) the
prior-filed application must be under a final Office action ( 1.113) or
under appeal at the time of filing the continuation application;
(4) the prior-filed application must be expressly abandoned upon filing
of the continuation application, with a letter of express abandonment
under 1.138 being concurrently filed in the prior-filed application;
and (5) applicant must request that the continuation application be placed
on an examiner's amended (Regular Amended) docket. This procedure is not
applicable to design applications because the continued prosecution
application procedures of 1.53(d) currently provide design applicants
with an optional streamlined continuation application procedure.
The optional streamlined continuation application procedure,
however, does require that the applicant provide a continuation
application filed under 35 U.S.C. 111(a) and 1.53(b) (and not a
request for continued examination under 35 U.S.C. 132(b) and 1.114
or a continued prosecution application under 1.53(d)).
Thus, the applicant must file a continuation application that meets the
conditions set forth in 35 U.S.C. 111(a) and 1.53(b) to be
accorded a filing date. The continuation application must also be
complete under 1.51(b) or completed under 1.53(f). The
Office will not docket an application for examination until the
application is complete ( 1.51(b) and 1.53(f)) and in
condition for publication ( 1.211). See 1.53(h). Thus, any
delay in submitting the filing fee and oath or declaration (or copy of
the oath or declaration from the prior-filed application under 1.63(d))
will delay the docketing of a continuation application even if
the applicant has requested that the continuation application be given
streamlined docketing.
This optional streamlined continuation application procedure
concerns only the placement of the continuation application on an
examiner's amended (Regular Amended) docket. The continuation
application is otherwise treated as a new application for patent. For
example, (1) the application filing fees including the basic filing
fee, search and examination fees, and any required excess claims fees
(and not the request for continued examination fee set forth in
1.17(e)) are required; (2) the continuation application will be
assigned a new application number; and (3) the continuation application
is subject to the patent term provisions of 35 U.S.C. 154(b) and
1.702 et seq. as a new continuation application (and not a request
for continued examination in the prior-filed application).
Section 1.78(d)(1)(ii) provides for divisional applications of an
application for the claims to a non-elected invention that has not been
examined if the application was subject to a requirement to comply with
the requirement of unity of invention under PCT Rule 13 or a
requirement for restriction under 35 U.S.C. 121. The divisional
application need not be filed during the pendency of the application
subject to a requirement for restriction, as long as the copendency
requirement of 35 U.S.C. 120 is met. This final rule also permits
applicant to file two continuation applications of a divisional
application plus a request for continued examination in the divisional
application family, without any justification. See
1.78(d)(1)(iii) and 1.114(f).
Specifically, 1.78(d)(1)(ii) permits a divisional application
of a prior-filed nonprovisional application or international
application designating the United States of America under the
following conditions. First, the divisional application must be a
divisional application as defined in 1.78(a)(2) that claims the
benefit under 35 U.S.C. 120, 121, or 365(c) of a prior-filed
application that was subject to a requirement to comply with the
requirement of unity of invention under PCT Rule 13 or a requirement
for restriction under 35 U.S.C. 121. Second, the divisional application
must contain only claims directed to an invention or inventions that
were identified in the requirement to comply with the requirement of
unity of invention or requirement for restriction but were not elected
for examination and were not examined in the prior-filed application or
in any other nonprovisional application. The "not elected for
examination and were not examined in any other nonprovisional
application" requirement does not apply to any continuation
application that claims the benefit under 35 U.S.C. 120, 121, or 365(c)
of the divisional application and satisfies the conditions set forth in
1.78(d)(1)(iii) or (d)(1)(vi).
Section 1.78(d)(1)(ii)(A) permits an applicant to obtain
examination of claims that were withdrawn from consideration in the
prior-filed application due to a requirement to comply with the
requirement of unity of invention under PCT Rule 13 or a requirement
for restriction under 35 U.S.C. 121. Thus, 1.78(d)(1)(ii)(A)
permits a divisional application filed as a result of a requirement to
comply with the requirement of unity of invention under PCT Rule 13 or
requirement for restriction under 35 U.S.C. 121 in the prior-filed
application. Section 1.78(d)(1)(ii)(A), however, does not permit a
divisional application not filed as a result of such a requirement in
the prior-filed application. Thus, 1.78(d)(1)(ii)(A) permits so-
called "involuntary" divisional applications but does not permit so-
called "voluntary" divisional applications.
Section 1.78(d)(1)(ii)(B) does not permit the filing of a set of
parallel divisional applications containing claims to the same
invention. Applicant, however, may serially prosecute up to two
continuation applications that contain claims to the same invention as
is claimed in a prior-filed divisional application if the continuation
application satisfies the conditions of 1.78(d)(1)(iii).
As discussed previously, applicants cannot rely upon a requirement
for restriction including an election of species to file a divisional
application in situations where: (1) The applicant traverses the
requirement for restriction; (2) the requirement for restriction may be
conditional, such as a requirement for election of species in an
application that contains a claim that is generic to all of the claimed
species (see MPEP section 809); and (3) the claims to the non-elected
invention may be rejoined at the request of the applicant (see MPEP
821.04 et seq.). See the discussion of 1.75(b)(5). This is because when
the requirement for restriction is withdrawn in the prior-filed
application, any divisional application that has been filed as the
result of the restriction requirement of the prior-filed application
will not be proper under 1.78(a)(2) and 1.78(d)(1)(ii).
Applicant is not permitted to file a divisional application of a prior-
filed application that is no longer subject to a restriction
requirement. Under 1.78(a)(2) and 1.78(d)(1)(ii), the prior-
filed application to which a divisional application claims the benefit
must be subject to a requirement to comply with the requirement of
unity of invention under PCT Rule 13 or a requirement for restriction
under 35 U.S.C. 121. Sections 1.78(a)(2) and 1.78(d)(1)(ii) also
require a divisional application to contain only claims directed to a
non-elected invention that has not been examined.
For an application that contains a generic claim in which a
requirement for an election of species has been made, applicants should
conclude prosecution of the generic claim in the initial application
and its continuation or continuation-in-part applications, including
exhaustion of any available appeals, before even filing a divisional
application to a non-elected species. If applicant no longer wants to
pursue the generic claim, applicant may file a divisional application
directed to a non-elected species. If applicant files a divisional
application directed to a non-elected species, applicant must: (1)
Cancel the claims to the non-elected species and the generic claim in
the prior-filed application before a rejoinder or reinstatement occurs;
(2) not present the non-elected claims and the generic claim in any
continuation or continuation-in-part application of the initial
application; and (3) not present the generic claim in the divisional
application or any continuation application of the divisional
application.
Under the Office's rejoinder practice, an applicant may request
rejoinder of claims to a non-elected invention that depend from or
otherwise require all the limitations of an allowable claim. See MPEP
821.04 et seq. Applicants may retain claims to a non-elected
invention in an application for possible rejoinder in the event of the
allowance of a claim to the elected invention. If applicant cancels all
of the claims directed to a non-elected invention before rejoinder
occurs and files a divisional application, the restriction requirement
will not be withdrawn and the non-elected claims that are now canceled
will not be rejoined. This will preserve applicant's rights under 35
U.S.C. 121 and 1.78(d)(1)(ii). See MPEP 821.04(b).
Section 1.78(d)(1)(iii) provides for continuation applications that
claim the benefit of a divisional application (either directly or
indirectly). Section 1.78(d)(1)(iii) permits such a continuation
application of a prior-filed nonprovisional application or
international application designating the United States of America if:
(1) The application is a continuation application as defined in
1.78(a)(3) that claims the benefit under 35 U.S.C. 120, 121, or 365(c)
of a divisional application that satisfies the conditions set forth in
1.78(d)(1)(ii); (2) the application discloses and claims only an
invention or inventions that were disclosed and claimed in the
divisional application; (3) the application claims the benefit of only
the divisional application, any application to which such divisional
application claims benefit under 35 U.S.C. 120, 121, or 365(c) in
compliance with the conditions set forth in 1.78(d)(1)(ii), and
no more than one intervening prior-filed nonprovisional application
(i.e., only one continuation application of the divisional application
filed between the divisional application and the second continuation
application of the divisional application); and (4) no more than one
other nonprovisional application claims the benefit of the divisional
application. This does not include any other divisional application
that satisfies the conditions set forth in 1.78(d)(1)(ii) or any
nonprovisional application that claims the benefit of such divisional
application and satisfies the conditions set forth in 1.78(d)(1)(iii)
or (d)(1)(vi). Section 1.78(d)(1)(iii) permits an applicant to continue
prosecution of a divisional application via two continuation applications
(in parallel or serially). The Office, however, will treat each application
prosecuted in parallel as having the total number of claims present in all
of such applications for purposes of determining whether an examination
support document is required by 1.75(b) provided that the continuation
application contains at least one claim that is patentably indistinct from
at least one claim in the divisional application.
Section 1.78(d)(1)(iii) does not permit a continuation-in-part of a
divisional application. Section 1.78(d)(1)(iii) is designed to permit
an applicant to complete prosecution with respect to an invention or
inventions that were disclosed and claimed in a divisional application,
and not to permit an applicant to seek patent protection for a new
invention that merely bears some relationship to an invention or
inventions that were disclosed and claimed in a divisional application.
Section 1.78(d)(1)(i) provides a mechanism for applicants to seek
patent protection for a new invention that is an improvement of an
invention or inventions that were disclosed and claimed in an initial
or continuing (including a divisional) application.
The provisions of 1.78(d)(1)(i) through (d)(1)(iii) are
illustrated with the following example: (1) There is an initial
application "A" that is subject to a restriction requirement under 35
U.S.C. 121 and 1.141 et seq.; (2) a continuation application
"B" of application "A"; (3) a further continuation application
"C" which claims the benefit of continuation application "B" and
initial application "A"; (4) a divisional application "D" (based
upon the restriction requirement under 35 U.S.C. 121 and 1.141 et
seq. in application "A"), which claims the benefit of continuation
application "C", continuation application "B", and initial
application "A"; (5) a continuation application "E" of divisional
application "D", which claims the benefit of divisional application
"D", continuation application "C", continuation application "B",
and initial application "A"; and (6) a further continuation
application "F" of continuation application "E", which claims the
benefit of continuation application "E", divisional application
"D", continuation application "C", continuation application "B",
and initial application "A".
Under 1.78(d)(1)(i), application "C" is either a
continuation application under 1.78(a)(3) or a continuation-in-
part application under 1.78(a)(4) that claims the benefit of no
more than two prior-filed applications "B" and "A". In addition,
applications "B" and "A" whose benefit is claimed in application
"C" have their benefit claimed in no more than one other application
(not including divisional application "D" or continuation
applications "E" and "F" of the divisional application "D"). That
is, the benefit of application "A" is claimed in only one other
application "B" (not including divisional application "D" or
continuation applications "E" and "F" of the divisional application "D"),
and the benefit of application "B" is claimed in only one other
application "C" (not including divisional application "D" or
continuation applications "E" and "F" of the divisional application
"D").
Under 1.78(d)(1)(ii), nonprovisional application "D" is a
divisional application under 1.78(a)(2) since it claims the
benefit of prior-filed application "A" that was subject to a
requirement to comply with the requirement of unity of invention under
PCT Rule 13 or a requiremen