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Mark Protsik, Patent Agent

Law Offices of Thomas Schneck

PO Box 2-E

SAN JOSE, CA 95109-0005

Phone: (408)297-9733

Fax- (408)297-9748


Assistant Commissioner for Patents

Box Comments


Attn: Hiram H. Bernstein

Re: Comments on Advance Notice of Proposed Rulemaking

Changes to implement the Patent Business Goals", 63 FR 53497


The following are my own views on topics 4 (limiting number of claims), 9 and 10 (information disclosure statement requirements), and 13 (amendment by replacement pages).

4.Limiting Number of Claims

Overall. this is a good proposal. However, an automatic waiver of the limitation to six independent claims should be considered in the following instance-.

Applicant presents claims in compliance with the limitations, which arc then examined. The Office action includes an objection that some claims are dependent upon rejected base claims but would be allowable if placed in independent form. Applicant complies with the required rewrite, but now the number of independent claims exceed six in number.

In this instance, the excess claims have already, been examined and have been found allowable over the prior art. Only the original dependent form of the claims was a problem. To require a limitation at this point would create unnecessary burdens, both on the applicant and the PTO. The rulemaking should take this situation into account.

9 and 10. Information Disclosure Statement Requirements

The provision allowing ten citations without discussion of their relevance is somewhat arbitrary, If the intent is to assist the examiner in identifying the relevance of the submissions, then whv not require descriptions for all citations? I suspect that the PTO recognizes the burden that the added requirements will place on, inventors and their attorneys or agents and simply wishes to discourage the very large submissions exemplified by the extreme cases noted in the rulemaking notice. BUL if this is indeed meant to discourage larger submissions, then the number 10 is too small to be of any use. Perhaps 20 citations would be a more reasonable cutoff. It is likely that only a very small percentage of cases would have more than 20 citations. But if more than 20 citations are made then all citations should be discussed. and not just the excess.

The requirement that each cited item must be individually, and uniquely described in a meaningful way relative to each of the independent claims, or if appropriate, to one or more specific dependent claims for which it is cited, is unduly burdensome. The examples of ways to describe a citation appear to desire applicants to make admissions on the record calculated to formulate rejections without the examiner having to read the references for his or her self and without having to do any more work than to cut and paste applicants comments together. A less burdensome way to achieve the PTO's goal would simply require applicants to provide "a concise explanation of the relevance of each listed item", as @igge 16:42 FROM THOMAS SCHNECK LAW OFFICE To 17033086916 P.03 YC)

formerly required prior to l992 in 37CFR 1.98. lf cited because of its relevance to a specific dependent claim, then those claims should be identified. For lengthy documents of say 50 or more pages, then an identification of especially relevant passages should be required (and encouraged in all other Cases). Also. if the document is already discussed in the patent application itself, then a simple reference to the location of that discussion should be sufficient. But detailed discussions should not be required, and the explanations should not be a substitute for the examiner's inspection of the document itself.

Finally, the PTO should not refuse to examine any IDS complying with the rules. This will lead to arbitrary and capricious decisions that the PTO %ill have to expend time and effort defending in court. The supposedly unusual circumstances given as examples all deal with lengthy documents. which can more easily deal with by requiring the identification of relevant passages, as discussed above.

13. Amendment by Replacement Pages

I support this change, but am puzzled b-y, the additional requirement for a marked up copy of the changed text The old way of making amendments is just as burdensome to applicants to prepare as it is for the PTO to enter, and now you want us to do both that and the replacement pages. A mere requirement that the claims that are being amended. added or canceled be identified. and the changes be explained would seem to be enough. If necessary, the examiner has the previous claim set in the file for comparison.


Mark Protsik

United States Patent and Trademark Office
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Last Modified: 7/4/2009 4:56:28 PM