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Elimination of CPA Practice

Sent: Wednesday, September 19, 2001 9:03 PM
To: AB37 Comments
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.


Jonathan Alan Quine
The Law Offices of Jonathan Alan Quine
2033 Clement Ave. #200
Alameda, CA 94501
Phone: 510-337-7871
Fax: 510-337-7877

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Last Modified: 7/4/2009 5:52:29 PM