Changes to the Transitional Procedures for Limited Examination After Final Rejection in Certain Applications Filed Before June 8, 1995, 24005-24007 [05-8876]
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Federal Register / Vol. 70, No. 87 / Friday, May 6, 2005 / Notices
activities. No rookeries, mating grounds,
areas of concentrated feeding, or other
areas of special significance for marine
mammals occur within or near the
relocation route.
The principal measures undertaken to
ensure that the barging operation will
not have an adverse impact on
subsistence activities are a CAA
between FEX, the AEWC and the
Whaling Captains Association; a Plan of
Cooperation; and an operation schedule
that will not permit barging operations
during the traditional bowhead whaling
season.
Proposed Authorization
NMFS proposes to issue an IHA for
the harassment of marine mammals
incidental to FEX conducting a barging
operation for approximately 20 days
from West Dock, Prudhoe Bay Alaska,
through the U.S. Beaufort Sea to either
Cape Simpson or Point Lonely. This
proposed IHA is contingent upon
incorporation of the previously
mentioned mitigation, monitoring, and
reporting requirements. NMFS has
preliminarily determined that the
proposed activity would result in the
harassment of small numbers of
bowhead whales, beluga whales, ringed
seals, bearded seals and spotted seals;
would have no more than a negligible
impact on these marine mammal stocks;
and would not have an unmitigable
adverse impact on the availability of
marine mammal stocks for subsistence
uses once the Plan of Cooperation is
submitted to NMFS and the previously
described CAA is signed.
Information Solicited
NMFS requests interested persons to
submit comments and information
concerning this proposed IHA and the
application for regulations request (see
ADDRESSES).
Dated: May 2, 2005.
P. Michael Payne,
Acting Director, Office of Protected Resources,
National Marine Fisheries Service.
[FR Doc. 05–9127 Filed 5–5–05; 8:45 am]
BILLING CODE 3510–22–S
DEPARTMENT OF COMMERCE
SUMMARY: The New England Fishery
Management Council (Council) is
scheduling a public meeting of its
Research Steering Committee in May,
2005. Recommendations from the
committee will be brought to the full
Council for formal consideration and
action, if appropriate.
The meeting will held on
Wednesday, May 25, 2005, at 9:30 a.m.
DATES:
The meeting will be held at
the Sheraton Colonial, One Audubon
Road, Wakefield, MA 01880; telephone:
(781) 245–9300.
ADDRESSES:
Paul
J. Howard, Executive Director, New
England Fishery Management Council
(978) 465–0492. Requests for special
accommodations should be addressed to
the New England Fishery Management
Council, 50 Water Street, Newburyport,
MA 01950; telephone: (978) 465–0492.
FOR FURTHER INFORMATION CONTACT:
There will
be a committee review of several
cooperative research project final
reports and the development of any
associated advice for use by the Council.
There will be an update on NOAA
Fisheries Service plans to issue a
Request for Proposals for short-term
research projects; and review of the
status of projects affected by the policy
to use ‘‘A’’ days-at-sea to account for
catch and associated fishing mortality
during cooperative research efforts.
Although non-emergency issues not
contained in this agenda may come
before this group for discussion, those
issues may not be the subject of formal
action during this meeting. Action will
be restricted to those issues specifically
listed in this notice and any issues
arising after publication of this notice
that require emergency action under
section 305(c) of the Magnuson-Stevens
Act, provided the public has been
notified of the Council’s intent to take
final action to address the emergency.
SUPPLEMENTARY INFORMATION:
This meeting is physically accessible
to people with disabilities. Requests for
sign language interpretation or other
auxiliary aids should be directed to Paul
J. Howard (see ADDRESSES) at least 5
days prior to the meeting dates.
National Oceanic and Atmospheric
Administration
[I.D. 050305A]
New England Fishery Management
Council; Public Meetings
National Marine Fisheries
Service (NMFS), National Oceanic and
Atmospheric Administration (NOAA),
Commerce
AGENCY:
18:03 May 05, 2005
Public meeting
Special Accommodations
DEPARTMENT OF COMMERCE
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ACTION:
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Dated: May 3, 2005.
Emily Menashes,
Acting Director, Office of Sustainable
Fisheries, National Marine Fisheries Service.
[FR Doc. E5–2209 Filed 5–5–05; 8:45 am]
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Patent and Trademark Office
[Docket No. 2005–P–059]
Changes to the Transitional
Procedures for Limited Examination
After Final Rejection in Certain
Applications Filed Before June 8, 1995
United States Patent and
Trademark Office, Commerce.
ACTION: Notice.
AGENCY:
SUMMARY: The Uruguay Round
Agreements Act (URAA) provided for a
transitional procedure for the limited
examination after final rejection in
certain applications filed before June 8,
1995. The United States Patent and
Trademark Office (Office) is changing its
final action practice for the Office action
immediately following a submission
under the URAA transitional limited
examination procedure. The Office is
changing this final action practice to
conform with the intent of the URAA
and to facilitate the completion of
prosecution of applications to which the
URAA transitional limited examination
procedure applies.
DATES: Effective Date: The change in
practice in this notice applies to any
submission under 37 CFR 1.129(a) filed
on or after June 8, 2005.
FOR FURTHER INFORMATION CONTACT:
Robert W. Bahr, Senior Patent Attorney,
Office of the Deputy Commissioner for
Patent Examination Policy, by telephone
at (571) 272–8800, by mail addressed to:
Mail Stop Comments—Patents,
Commissioner for Patents, P.O. Box
1450, Alexandria, VA 22313–1450, or by
facsimile to (571) 273–7735, marked to
the attention of Robert W. Bahr.
SUPPLEMENTARY INFORMATION: The
URAA provided (among other things)
for the Office to prescribe regulations to
provide further limited (re)examination
after final rejection of applications that
have been pending for two years or
longer as of June 8, 1995, taking into
account any reference made in such
application to any earlier filed
applications under 35 U.S.C. 120, 121,
or 365(c). See Pub. L. 103–465,
§ 532(a)(2)(A), 108 Stat. 4809, 4985
(1994). The Statement of Administration
Action that accompanied the URAA
indicated that the purpose of this
transitional procedure for the limited
examination of certain applications filed
before June 8, 1995, was to facilitate the
completion of the prosecution of
applications pending in the Office as of
June 8, 1995. See Uruguay Round
Agreements Act: Statement of
Administrative Action, H.R. Doc. No.
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Federal Register / Vol. 70, No. 87 / Friday, May 6, 2005 / Notices
103–316, at 1005 (1994), reprinted in
1994 U.S.C.C.A.N. 4040, 4298 (emphasis
added). Section 102(d) of the URAA (19
U.S.C. 3512(d)) provides that ‘‘[t]he
statement of administrative action
approved by the Congress under section
101(a) shall be regarded as an
authoritative expression by the United
States concerning the interpretation and
application of the Uruguay Round
Agreements and this Act in any judicial
proceeding in which a question arises
concerning such interpretation or
application.’’ See also RHP Bearings,
Ltd. v. United States, 288 F.3d 1334,
1344 n.7 (Fed. Cir. 2002).
The Office implemented this
provision in the URAA for the further
limited examination of certain
applications filed before June 8, 1995, in
a then new 37 CFR 1.129(a). See
Changes to Implement 20-Year Patent
Term and Provisional Applications, 60
FR 20195 (Apr. 25, 1995), 1174 Off. Gaz.
Pat. Office 15 (May 2, 1995) (final rule)
(Twenty-Year Term Final Rule). With
respect to the question of whether the
Office action following a submission
under 37 CFR 1.129(a) would be made
final, the preamble to the Twenty-Year
Term Final Rule indicated that: The
next [Office] action following timely
payment of the fee set forth in [37 CFR]
1.17(r) will be equivalent to a first
action in a continuing application.
* * * Thus, under [37 CFR] 1.129(a), if
the first submission after final rejection
was initially denied entry in the
application because (1) new issues were
raised that required further
consideration and/or search, or (2) the
issue of new matter was raised, then the
next action in the application will not
be made final. Likewise, if the second
submission after final rejection was
initially denied entry in the application
because (1) new issues were raised that
required further consideration and/or
search, or (2) the issue of new matter
was raised, then the next action in the
application will not be made final.
See Changes to Implement 20-Year
Patent Term and Provisional
Applications, 60 FR at 20199, 1174 Off.
Gaz. Pat. Office at 18. This statement of
Office practice was subsequently
incorporated into the Manual of Patent
Examining Procedure (MPEP). See
MPEP 706.07(g) (8th ed. 2001) (Rev. 2,
May 2004).
It has now been a decade since the
change to twenty-year patent term in the
URAA. Nevertheless, there are still
applications filed before June 8, 1995,
pending before the Office in which a
second (or both first and second)
submission under 37 CFR 1.129(a) may
be filed, though the Office now receives
fewer than 100 submissions under 37
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CFR 1.129(a) each year. This final action
practice for the Office action
immediately following a submission
under 37 CFR 1.129(a) is having a
greater than anticipated (in 1995) effect
in working against the completion of
prosecution of applications filed before
June 8, 1995. In addition, a review of the
Statement of Administration Action
reveals that the final action practice for
the Office action immediately following
a submission under 37 CFR 1.129(a)
(treating such Office action as the
equivalent to a first action in a
continuing application) was not the
contemplated implementation of the
transitional procedure provided for in
§ 532(a)(2)(A) of the URAA. See
Uruguay Round Agreements Act:
Statement of Administrative Action,
H.R. Doc. No. 103–316, at 1006,
reprinted in 1994 U.S.C.C.A.N. at 4298
(‘‘[t]he [Office] will consider the merits
of the first and second such submission,
to the extent that such submissions
would have been entitled to
consideration if made prior to final
rejection. The [Office] will modify such
final rejection or allow such application,
as appropriate, based upon
consideration of such submissions’’).
Therefore, the Office is changing its
final action practice for the Office action
immediately following a submission
under 37 CFR 1.129(a) to bring about the
completion of prosecution of
applications to which the transitional
procedure set forth in 37 CFR 1.129(a)
applies.
Under the final action practice for the
Office action immediately following a
submission under 37 CFR 1.129(a) now
being adopted by the Office: The next
Office action following timely filing of
a submission under 37 CFR 1.129(a)
(and payment of the fee set forth in 37
CFR 1.17(r)) will be equivalent to the
next Office action following a reply to
a non-final Office action. Under existing
second Office action final practice, such
an Office action on the merits shall be
made final, except where the examiner
introduces a new ground of rejection
that is neither necessitated by
applicant’s amendment of the claims
nor 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). See MPEP 706.07(a). Any
information disclosure statement
submitted under 37 CFR 1.129(a)
without the statement specified in 37
CFR 1.97(e) will be treated as though it
had been filed within the time period
set forth in 37 CFR 1.97(c) with the fee
set forth in 37 CFR 1.17(p) (in view of
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applicant’s payment of the fee set forth
in 37 CFR 1.17(r)).
Under § 532(a)(2)(A) of the URAA
(and the Statement of Administration
Action), an applicant whose application
is eligible for the transitional further
limited examination procedure set forth
in 37 CFR 1.129(a) is entitled to
consideration of two after final
submissions. Thus, if such an applicant
has filed one submission under 37 CFR
1.129(a) and the application is again
under a final rejection, the applicant is
entitled to only one additional
submission under 37 CFR 1.129(a). If
such an applicant has filed two
submissions under 37 CFR 1.129(a) and
the application is again under a final
rejection, § 532(a)(2)(A) of the URAA
(and the Statement of Administration
Action) and 37 CFR 1.129(a) do not
entitle the applicant to consideration of
any additional submissions under 37
CFR 1.129(a). The applicant is, of
course, entitled to consideration of an
additional submission if the submission
meets the conditions set forth in 37 CFR
1.116.
The Office recognizes that its former
final action practice for the Office action
immediately following a submission
under 37 CFR 1.129(a) resulted in some
applicants effectively receiving
consideration of more than two
submissions under 37 CFR 1.129(a).
Section 532(a)(2)(A) of the URAA and
the Statement of Administration Action,
however, provide only for consideration
of a first and second submission under
37 CFR 1.129(a), and do not
contemplate each such submission
being treated as the equivalent of a
continuing application. That the Office’s
former final action practice for the
Office action immediately following a
submission under 37 CFR 1.129(a)
resulted in some applicants effectively
receiving consideration of more than
two submissions under 37 CFR 1.129(a)
does not require the Office to continue
to follow an after final practice having
a result not contemplated by
§ 532(a)(2)(A) of the URAA and the
Statement of Administration Action. See
In re The Boulevard Entertainment, Inc.,
334 F.3d 1336, 1343, 67 USPQ2d 1475,
1480 (Fed. Cir. 2003) (that the Office has
followed an improper practice in certain
applications does not require the Office
to follow that improper practice in all
applications).
Finally, the Twenty-Year Term Final
Rule also indicated that the Office
action following timely payment of the
fee set forth in 37 CFR 1.17(r) will be
equivalent to a first action in a
continuing application due to the
amount of the fee specified in 37 CFR
1.17(r). See Changes to Implement 20-
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Federal Register / Vol. 70, No. 87 / Friday, May 6, 2005 / Notices
Year Patent Term and Provisional
Applications, 60 FR at 20199, 1174 Off.
Gaz. Pat. Office at 18. The fee amount
specified in 37 CFR 1.17(r) does not
justify a continuation of the final action
practice set forth in the Twenty-Year
Term Final Rule because: (1) The fee
amount at 37 CFR 1.17(r) is no longer
equivalent to the fee required for filing
an application (the filing, search, and
examination fee); and (2) the
applications still eligible for
submissions under 37 CFR 1.129(a) tend
to be more burdensome than the
‘‘usual’’ continuing application (e.g.,
these applications tend to have more
claims, have more continuity
information, and have more related
copending applications). Therefore, the
fee amount specified in 37 CFR 1.17(r)
is no longer a sufficient justification for
treating the Office action following a
submission under 37 CFR 1.129(a) as
the equivalent to a first action in a
continuing application.
Paperwork Reduction Act: This notice
involves information collection
requirements which are subject to
review by the Office of Management and
Budget (OMB) under the Paperwork
Reduction Act of 1995 (44 U.S.C. 3501
et seq.). The collection of information
involved in this notice has been
reviewed and previously approved by
OMB under OMB control number 0651–
0031. The Office is not resubmitting any
information collection package to OMB
for its review and approval because the
changes in this notice do not affect the
information collection requirements
associated with the information
collection under OMB control number
0651–0031.
Notwithstanding any other provision
of law, no person is required to respond
to nor shall a person be subject to a
penalty for failure to comply with a
collection of information subject to the
requirements of the Paperwork
Reduction Act unless that collection of
information displays a currently valid
OMB control number.
Section 706.07(g) of the Manual of
Patent Examining Procedure will be
revised in due course to reflect this
change in practice.
Dated: April 20, 2005.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office.
[FR Doc. 05–8876 Filed 5–5–05; 8:45 am]
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CORPORATION FOR NATIONAL AND
COMMUNITY SERVICE
Information Collection; Submission for
OMB Review; Comment Request
Corporation for National and
Community Service.
ACTION: Notice.
AGENCY:
SUMMARY: The Corporation for National
and Community Service (hereinafter the
‘‘Corporation’’), has submitted a public
information collection request (ICR) to
the Office of Management and Budget
(OMB) for review and approval in
accordance with the Paperwork
Reduction Act of 1995, Pub. L. 104–13,
(44 U.S.C. Chapter 35). Copies of this
ICR, with applicable supporting
documentation, may be obtained by
calling the Corporation for National and
Community Service, Ms. Marci Hunn, at
(202) 606–5000, extension 432,
(mhunn@cns.gov); (TTY/TDD) at (202)
606–5256 between the hours of 9 a.m.
and 4 p.m. eastern standard time,
Monday through Friday.
ADDRESSES: Comments may be
submitted, identified by the title of the
information collection activity, to the
Office of information and Regulatory
Affairs, Attn: Ms. Katherine Astrich,
OMB Desk Office for the Corporation for
National and community Service, by
any of the following two methods
within 30 days from the date of
publication in this Federal Register.
(1) By fax to: (202) 395–6974,
Attention: Ms. Katherine Astrich, OMB
Desk Officer for the Corporation for
National and Community Service; and
(2) Electronically by e-mail to:
Katherine_T._Astrich@omb.eop.gov.
The initial 60-day Federal Register
notice for the Challenge Grant
Application Instructions was published
on February 14, 2005. This comment
period ended on April 15, 2005; no
comments were received.
SUPPLEMENTARY INFORMATION:
The OMB is particularly interested in
comments which:
• Evaluate whether the proposed
collection of information is necessary
for the proper performance of the
functions of the Corporation, including
whether the information will have
practical utility;
• Evaluate the accuracy of the
Corporation’s estimate of the burden of
the proposed collection of information,
including the validity of the
methodology and assumptions used;
• Propose ways to enhance the
quality, utility and clarity of the
information to be collected; and
• Propose ways to minimize the
burden of the collection of information
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24007
on those who are to respond, including
the use of appropriate automated,
electronic, mechanical, or other
technological collection techniques or
other forms of information technology,
e.g., permitting electronic submissions
of responses.
Type of Review: New.
Agency: Corporation for National and
Community Service.
Title: Challenge Grant Application
Instructions.
OMB Number: None.
Agency Number: None.
Affected Public: Organizations who
are interested applying for Challenge
Grant funding.
Total Respondents: 40.
Frequency: On occasion.
Average Time Per Response: Ten (10)
hours.
Estimated Total Burden Hours: 400
hours.
Total Burden Cost (capital/startup):
None.
Total Burden Cost (operating/
maintenance): None.
Description: The purpose of these
Challenge Grants is to assist nonprofit
organizations in securing previously
untapped sources of private funds to
build sustainable national and
community service programs.
Organizations receiving funds must
either greatly expand services by
engaging citizens in meeting community
needs or offer new services through
expanded citizen engagement.
The Application Instructions
submitted as part of this public
collection request are pertinent only to
the Corporation’s online application
system, eGrants. As noted in the 60-day
notice published on February 14, 2005,
use of the government-wide grants
application system, Grants.gov, for this
competition was dependent upon that
system’s ability to accommodate the
Corporation’s specific individualized
needs. We are continuing to cooperate
with Grants.gov in developing the
capability to accept applications
through that system. Instructions for
applying through Grants.gov will be
developed and submitted for approval
when that system is compatible with
our technical application requirements.
Dated: April 29, 2005.
Marlene Zakai,
Director, Office of Grants Policy and
Operation.
[FR Doc. 05–9009 Filed 5–5–05; 8:45 am]
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]]>Agencies
[Federal Register Volume 70, Number 87 (Friday, May 6, 2005)]
[Notices]
[Pages 24005-24007]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 05-8876]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. 2005-P-059]
Changes to the Transitional Procedures for Limited Examination
After Final Rejection in Certain Applications Filed Before June 8, 1995
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
-----------------------------------------------------------------------
SUMMARY: The Uruguay Round Agreements Act (URAA) provided for a
transitional procedure for the limited examination after final
rejection in certain applications filed before June 8, 1995. The United
States Patent and Trademark Office (Office) is changing its final
action practice for the Office action immediately following a
submission under the URAA transitional limited examination procedure.
The Office is changing this final action practice to conform with the
intent of the URAA and to facilitate the completion of prosecution of
applications to which the URAA transitional limited examination
procedure applies.
DATES: Effective Date: The change in practice in this notice applies to
any submission under 37 CFR 1.129(a) filed on or after June 8, 2005.
FOR FURTHER INFORMATION CONTACT: Robert W. Bahr, Senior Patent
Attorney, Office of the Deputy Commissioner for Patent Examination
Policy, by telephone at (571) 272-8800, by mail addressed to: Mail Stop
Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria,
VA 22313-1450, or by facsimile to (571) 273-7735, marked to the
attention of Robert W. Bahr.
SUPPLEMENTARY INFORMATION: The URAA provided (among other things) for
the Office to prescribe regulations to provide further limited
(re)examination after final rejection of applications that have been
pending for two years or longer as of June 8, 1995, taking into account
any reference made in such application to any earlier filed
applications under 35 U.S.C. 120, 121, or 365(c). See Pub. L. 103-465,
Sec. 532(a)(2)(A), 108 Stat. 4809, 4985 (1994). The Statement of
Administration Action that accompanied the URAA indicated that the
purpose of this transitional procedure for the limited examination of
certain applications filed before June 8, 1995, was to facilitate the
completion of the prosecution of applications pending in the Office as
of June 8, 1995. See Uruguay Round Agreements Act: Statement of
Administrative Action, H.R. Doc. No.
[[Page 24006]]
103-316, at 1005 (1994), reprinted in 1994 U.S.C.C.A.N. 4040, 4298
(emphasis added). Section 102(d) of the URAA (19 U.S.C. 3512(d))
provides that ``[t]he statement of administrative action approved by
the Congress under section 101(a) shall be regarded as an authoritative
expression by the United States concerning the interpretation and
application of the Uruguay Round Agreements and this Act in any
judicial proceeding in which a question arises concerning such
interpretation or application.'' See also RHP Bearings, Ltd. v. United
States, 288 F.3d 1334, 1344 n.7 (Fed. Cir. 2002).
The Office implemented this provision in the URAA for the further
limited examination of certain applications filed before June 8, 1995,
in a then new 37 CFR 1.129(a). See Changes to Implement 20-Year Patent
Term and Provisional Applications, 60 FR 20195 (Apr. 25, 1995), 1174
Off. Gaz. Pat. Office 15 (May 2, 1995) (final rule) (Twenty-Year Term
Final Rule). With respect to the question of whether the Office action
following a submission under 37 CFR 1.129(a) would be made final, the
preamble to the Twenty-Year Term Final Rule indicated that: The next
[Office] action following timely payment of the fee set forth in [37
CFR] 1.17(r) will be equivalent to a first action in a continuing
application. * * * Thus, under [37 CFR] 1.129(a), if the first
submission after final rejection was initially denied entry in the
application because (1) new issues were raised that required further
consideration and/or search, or (2) the issue of new matter was raised,
then the next action in the application will not be made final.
Likewise, if the second submission after final rejection was initially
denied entry in the application because (1) new issues were raised that
required further consideration and/or search, or (2) the issue of new
matter was raised, then the next action in the application will not be
made final.
See Changes to Implement 20-Year Patent Term and Provisional
Applications, 60 FR at 20199, 1174 Off. Gaz. Pat. Office at 18. This
statement of Office practice was subsequently incorporated into the
Manual of Patent Examining Procedure (MPEP). See MPEP 706.07(g) (8th
ed. 2001) (Rev. 2, May 2004).
It has now been a decade since the change to twenty-year patent
term in the URAA. Nevertheless, there are still applications filed
before June 8, 1995, pending before the Office in which a second (or
both first and second) submission under 37 CFR 1.129(a) may be filed,
though the Office now receives fewer than 100 submissions under 37 CFR
1.129(a) each year. This final action practice for the Office action
immediately following a submission under 37 CFR 1.129(a) is having a
greater than anticipated (in 1995) effect in working against the
completion of prosecution of applications filed before June 8, 1995. In
addition, a review of the Statement of Administration Action reveals
that the final action practice for the Office action immediately
following a submission under 37 CFR 1.129(a) (treating such Office
action as the equivalent to a first action in a continuing application)
was not the contemplated implementation of the transitional procedure
provided for in Sec. 532(a)(2)(A) of the URAA. See Uruguay Round
Agreements Act: Statement of Administrative Action, H.R. Doc. No. 103-
316, at 1006, reprinted in 1994 U.S.C.C.A.N. at 4298 (``[t]he [Office]
will consider the merits of the first and second such submission, to
the extent that such submissions would have been entitled to
consideration if made prior to final rejection. The [Office] will
modify such final rejection or allow such application, as appropriate,
based upon consideration of such submissions''). Therefore, the Office
is changing its final action practice for the Office action immediately
following a submission under 37 CFR 1.129(a) to bring about the
completion of prosecution of applications to which the transitional
procedure set forth in 37 CFR 1.129(a) applies.
Under the final action practice for the Office action immediately
following a submission under 37 CFR 1.129(a) now being adopted by the
Office: The next Office action following timely filing of a submission
under 37 CFR 1.129(a) (and payment of the fee set forth in 37 CFR
1.17(r)) will be equivalent to the next Office action following a reply
to a non-final Office action. Under existing second Office action final
practice, such an Office action on the merits shall be made final,
except where the examiner introduces a new ground of rejection that is
neither necessitated by applicant's amendment of the claims nor 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). See MPEP 706.07(a). Any information disclosure
statement submitted under 37 CFR 1.129(a) without the statement
specified in 37 CFR 1.97(e) will be treated as though it had been filed
within the time period set forth in 37 CFR 1.97(c) with the fee set
forth in 37 CFR 1.17(p) (in view of applicant's payment of the fee set
forth in 37 CFR 1.17(r)).
Under Sec. 532(a)(2)(A) of the URAA (and the Statement of
Administration Action), an applicant whose application is eligible for
the transitional further limited examination procedure set forth in 37
CFR 1.129(a) is entitled to consideration of two after final
submissions. Thus, if such an applicant has filed one submission under
37 CFR 1.129(a) and the application is again under a final rejection,
the applicant is entitled to only one additional submission under 37
CFR 1.129(a). If such an applicant has filed two submissions under 37
CFR 1.129(a) and the application is again under a final rejection,
Sec. 532(a)(2)(A) of the URAA (and the Statement of Administration
Action) and 37 CFR 1.129(a) do not entitle the applicant to
consideration of any additional submissions under 37 CFR 1.129(a). The
applicant is, of course, entitled to consideration of an additional
submission if the submission meets the conditions set forth in 37 CFR
1.116.
The Office recognizes that its former final action practice for the
Office action immediately following a submission under 37 CFR 1.129(a)
resulted in some applicants effectively receiving consideration of more
than two submissions under 37 CFR 1.129(a). Section 532(a)(2)(A) of the
URAA and the Statement of Administration Action, however, provide only
for consideration of a first and second submission under 37 CFR
1.129(a), and do not contemplate each such submission being treated as
the equivalent of a continuing application. That the Office's former
final action practice for the Office action immediately following a
submission under 37 CFR 1.129(a) resulted in some applicants
effectively receiving consideration of more than two submissions under
37 CFR 1.129(a) does not require the Office to continue to follow an
after final practice having a result not contemplated by Sec.
532(a)(2)(A) of the URAA and the Statement of Administration Action.
See In re The Boulevard Entertainment, Inc., 334 F.3d 1336, 1343, 67
USPQ2d 1475, 1480 (Fed. Cir. 2003) (that the Office has followed an
improper practice in certain applications does not require the Office
to follow that improper practice in all applications).
Finally, the Twenty-Year Term Final Rule also indicated that the
Office action following timely payment of the fee set forth in 37 CFR
1.17(r) will be equivalent to a first action in a continuing
application due to the amount of the fee specified in 37 CFR 1.17(r).
See Changes to Implement 20-
[[Page 24007]]
Year Patent Term and Provisional Applications, 60 FR at 20199, 1174
Off. Gaz. Pat. Office at 18. The fee amount specified in 37 CFR 1.17(r)
does not justify a continuation of the final action practice set forth
in the Twenty-Year Term Final Rule because: (1) The fee amount at 37
CFR 1.17(r) is no longer equivalent to the fee required for filing an
application (the filing, search, and examination fee); and (2) the
applications still eligible for submissions under 37 CFR 1.129(a) tend
to be more burdensome than the ``usual'' continuing application (e.g.,
these applications tend to have more claims, have more continuity
information, and have more related copending applications). Therefore,
the fee amount specified in 37 CFR 1.17(r) is no longer a sufficient
justification for treating the Office action following a submission
under 37 CFR 1.129(a) as the equivalent to a first action in a
continuing application.
Paperwork Reduction Act: This notice involves information
collection requirements which are subject to review by the Office of
Management and Budget (OMB) under the Paperwork Reduction Act of 1995
(44 U.S.C. 3501 et seq.). The collection of information involved in
this notice has been reviewed and previously approved by OMB under OMB
control number 0651-0031. The Office is not resubmitting any
information collection package to OMB for its review and approval
because the changes in this notice do not affect the information
collection requirements associated with the information collection
under OMB control number 0651-0031.
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
Section 706.07(g) of the Manual of Patent Examining Procedure will
be revised in due course to reflect this change in practice.
Dated: April 20, 2005.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 05-8876 Filed 5-5-05; 8:45 am]
BILLING CODE 3510-16-P
