From: jaquine@quinelaw.com Sent: Wednesday, September 19, 2001 9:03 PM To: AB37 Comments Cc: thunter@quinelaw.com Subject: Elimination of CPA Practice Dear Sir: I write to oppose the elimination of CPA practice proposed in 66 Fed. Reg. 35763. The argument that CPAs are duplicative with RCE practice is simply incorrect. There are a number of substantive and procedural rights that exist for CPAs that do not exist for RCEs. First, re-filing a case which predates November 29, 1999 using the provisions of the CPA rules eliminates 102(e) prior art in an obviousness context, i.e., under 103(c) as enacted on November 29, 1999. Because an RCE is not a new filing, this important ability to remove one's own 102(e) prior art from consideration as an obviousness reference can not be achieved short of filing a separate continuation application. This has obvious procedural and substantive disadvantages. Second, one cannot file an "RCE divisional" application, in contrast to the situation for CPA practice. Given that one may realize during prosecution that a non-elected group is more clearly patentable than the elected group, the ability to refocus the case (e.g., from compositions to methods) is of considerable importance. As a practical matter, the inability to significantly refocus a case with an RCE is also subject to considerable potential abuse by Examiners who all too often apply restriction requirements incorrectly. Third, the ability to file a CPA prior to close of prosecution provides a significant procedural right that does not exist for RCE practice. The ability to substantially refocus a case, e.g., after a first search and office action, provides a fair and efficient mechanism to redirect a case towards a substantially different invention than was claimed initially. Continuity of examination in this situation (i.e., as opposed to simply filing a continuation) can speed the overall examination process considerably and uses the resources of the office more efficiently. Respectfully, Jonathan Alan Quine The Law Offices of Jonathan Alan Quine 2033 Clement Ave. #200 Alameda, CA 94501 Web:www.quinelaw.com E-mail: jaquine@quinelaw.com Phone: 510-337-7871 Fax: 510-337-7877 ******************************************** Warning: The information contained in this electronic mail message is intended only for the personal and confidential use of the designated recipient(s) named above. This message may be an attorney-client communication, may be protected by the work product doctrine, and may be subject to a protective order. As such, this message is privileged and/or confidential. If the reader of this message is not the intended recipient or an agent responsible for delivering it to the intended recipient, you are hereby notified that you have received this message in error and that any review, dissemination, distribution, or copying of this message is strictly prohibited. If you have received this communication in error, please notify us immediately by telephone and e-mail and destroy any and all copies of this message in your possession (whether hard copies or electronically stored copies). Thank you. *************************************************