Request for Comments on Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility, 75451-75452 [E5-7552]

Download as PDF Federal Register / Vol. 70, No. 243 / Tuesday, December 20, 2005 / Notices DEPARTMENT OF COMMERCE. International Trade Administration A–122–822 Notice of Extension of Time Limit for Final Results of Antidumping Duty Administrative Review: Certain Corrosion–Resistant Carbon Steel Flat Products from Canada Import Administration, International Trade Administration, Department of Commerce. EFFECTIVE DATE: December 20, 2005. FOR FURTHER INFORMATION CONTACT: Gene Calvert or Sean Carey, AD/CVD Operations, Office 6, Import Administration, International Trade Administration, U.S. Department of Commerce, 14th Street and Constitution Avenue, NW, Washington, DC 20230; telephone: (202) 482–3586 or (202) 482– 3964, respectively. SUPPLEMENTARY INFORMATION: AGENCY: and Stelco Inc. Therefore, the Department finds that it is not practicable to complete the review by the original deadline of January 7, 2006. Consequently, in accordance with section 751(a)(3)(A) of the Act and section 351.213(h)(2) of the Department’s regulations, the Department is extending the time limit for the completion of the final results of the review until no later than March 8, 2006, which is 180 days from the publication of the preliminary results. This notice is issued and published in accordance with sections 751(a)(3)(A) and 777(i) of the Act. Dated: December 13, 2005. Stephen J. Claeys, Deputy Assistant Secretaryfor Import Administration. [FR Doc. E5–7562 Filed 12–19–05; 8:45 am] BILLING CODE 3510–DS–S DEPARTMENT OF COMMERCE Background Patent and Trademark Office On September 9, 2005, the Department of Commerce (‘‘the Department’’) published the preliminary results of the administrative review of the antidumping duty order on certain corrosion–resistant carbon steel flat products from Canada for the period of August 1, 2003, through July 31, 2004 (see Certain Corrosion–Resistant Carbon Steel Flat Products from Canada: Preliminary Results of Antidumping Duty Administrative Review, 70 FR 53621 (September 9, 2005)) (Preliminary Results). The current deadline for the final results of this review is January 7, 2006. [Docket No.: 2005–P–072] Extension of Time Limit for Final Results of Review Section 751(a)(3)(A) of the Tariff Act of 1930, as amended (‘‘the Act’’), requires the Department to issue the final results in an administrative review within 120 days of the date on which the preliminary results were published. However, if it is not practicable to complete the review within this time period, section 751(a)(3)(A) of the Act allows the Department to extend the time limit for the final results to 180 days from the date of publication of the preliminary results. Because of the Department’s recent verification after the issuance of its preliminary determination, additional time is required to release and analyze its findings, and to afford interested parties the opportunity to comment on the verification findings of the three Canadian producers of subject merchandise: Dofasco Inc., Sorevco Inc., VerDate Aug<31>2005 19:23 Dec 19, 2005 Jkt 208001 RIN 0651–AB98 Request for Comments on Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility United States Patent and Trademark Office, Commerce. ACTION: Request for comments. AGENCY: SUMMARY: The United States Patent and Trademark Office (USPTO) has, in response to recent case law, revised its guidelines to be used by USPTO personnel in their review of patent applications to determine whether the claims in a patent application are directed to patent eligible subject matter. The USPTO is requesting comments from the public regarding these interim examination guidelines. Comment Deadline Date: To be ensured of consideration, written comments must be received on or before June 30, 2006. No public hearing will be held. ADDRESSES: Comments should be sent by electronic mail message over the Internet addressed to AB98.Comments@uspto.gov. Comments may also be submitted by mail addressed to: Mail Stop Comments— Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313–1450, or by facsimile to (571) 273–0125, marked to the attention of Linda Therkorn. Although comments may be submitted by mail or facsimile, the Office prefers to receive comments via PO 00000 Frm 00007 Fmt 4703 Sfmt 4703 75451 the Internet. If comments are submitted by mail, the Office prefers that the comments be submitted on a DOS formatted 3 1/2 inch disk accompanied by a paper copy. Comments may also be sent by electronic mail message over the Internet via the Federal eRulemaking Portal. See the Federal eRulemaking Portal Web site (https:// www.regulations.gov) for additional instructions on providing comments via the Federal eRulemaking Portal. The comments will be available for public inspection at the Office of the Commissioner for Patents, located in Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia, and will be available via the Office Internet Web site (address: https://www.uspto.gov). Because comments will be made available for public inspection, information that is not desired to be made public, such as an address or phone number, should not be included in the comments. FOR FURTHER INFORMATION CONTACT: Linda Therkorn, Office of the Deputy Commissioner for Patent Examination Policy, by telephone at 571–272–8800, or Ray Chen, Office of the Solicitor, by telephone at 571–272–9035, by mail addressed to: Mail Stop Comments, P.O. Box 1450, Alexandria, VA, 22313–1450, or by facsimile transmission to 571– 273–0125, marked to the attention of Linda Therkorn or Ray Chen. SUPPLEMENTARY INFORMATION: The USPTO has published a notice setting forth interim guidelines for the examination of patent applications for patent subject matter eligibility under 35 U.S.C. 101. See Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility, 1300 Off. Gaz. Pat. Office 142 (Nov. 22, 2005) (Patent Subject Matter Eligibility Interim Guidelines). The Patent Subject Matter Eligibility Interim Guidelines are based on the USPTO’s current understanding of the law and are believed to be fully consistent with binding precedent of the U.S. Supreme Court, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) and the Federal Circuit’s predecessor courts. The Patent Subject Matter Eligibility Interim Guidelines do not constitute substantive rule making and hence do not have the force and effect of law. The Patent Subject Matter Eligibility Interim Guidelines have been designed to assist USPTO personnel in analyzing claimed subject matter for compliance with substantive law. Rejections will be based upon the substantive law and it is these rejections which are appealable. Consequently, E:\FR\FM\20DEN1.SGM 20DEN1 75452 Federal Register / Vol. 70, No. 243 / Tuesday, December 20, 2005 / Notices any failure by USPTO personnel to follow the Patent Subject Matter Eligibility Interim Guidelines is neither appealable nor petitionable. The Patent Subject Matter Eligibility Interim Guidelines merely revise USPTO examination practice for consistency with the USPTO’s current understanding of the case law regarding patent subject matter eligibility under 35 U.S.C. 101. Therefore, the Patent Subject Matter Eligibility Interim Guidelines are interpretive or relate only to agency practice and procedure, and prior notice and an opportunity for public comment are not required under 5 U.S.C. 553(b)(A) (or any other law). Nevertheless, the USPTO is providing this opportunity for public comment because the USPTO desires the benefit of public comment on the Patent Subject Matter Eligibility Interim Guidelines. The USPTO is particularly interested in comments addressing the following questions: (1) While the Patent Subject Matter Eligibility Interim Guidelines explain that physical transformation of an article or physical object to a different state or thing to another establishes that a claimed invention is eligible for patent protection, Annex III to the Patent Subject Matter Eligibility Interim Guidelines explains that identifying that a claim transforms data from one value to another is not by itself sufficient for establishing that the claim is eligible for patent protection. Therefore, claims that perform data transformation must still be examined for whether there is a practical application of an abstract idea that produces a useful, concrete, and tangible result. Is the distinction between physical transformation and data transformation appropriate in the context of the Patent Subject Matter Eligibility Interim Guidelines? If not, please explain why and provide support for an alternative analysis. (2) Is the USPTO interpretation of State Street Bank & Trust Co. v. Signature Financial Group Inc., 149 F. 3d 1368, 47 USPQ2d 1596 (Fed. Cir. 1998), as holding that if there is no physical transformation, a claimed invention must necessarily, either expressly or inherently, produce a useful, concrete, and tangible result (rather than just be ‘‘capable of’’ producing such a result) either too broad or too narrow? If so, please suggest an alternative interpretation and reasons therefor. (3) As the courts have yet to define the terms ‘‘useful,’’ ‘‘concrete,’’ and ‘‘tangible’’ in the context of the practical application requirement, are the explanations provided in the Patent Subject Matter Eligibility Interim VerDate Aug<31>2005 19:23 Dec 19, 2005 Jkt 208001 Guidelines sufficient? If not, please suggest alternative explanations. (4) What role should preemption have in the determination of whether a claimed invention is directed to a practical application of a 35 U.S.C. 101 judicial exception? (5) Annex IV to the Patent Subject Matter Eligibility Interim Guidelines explains why the USPTO considers claims to signals per se, whether functional descriptive material or nonfunctional descriptive material, to be nonstatutory subject matter. Does the USPTO analysis represent a reasonable extrapolation of relevant case law? If not, please explain why and provide support for an alternative analysis. If claims directed to a signal per se are determined to be statutory subject matter, what is the potential impact on internet service providers, satellites, wireless fidelity (WiFi ), and other carriers of signals? The USPTO also notes that the U.S. Supreme Court has granted certiorari in Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., S.Ct. No. 04–607 (LabCorp). See 546 U.S. ll (Nov. 2, 2005). The USPTO expects that a decision in LabCorp will be rendered sometime before the end of June 2006. Since the Court’s decision in LabCorp may impact the broader question of patent subject matter eligibility under 35 U.S.C. 101, the USPTO is extending the period for public comment on the USPTO’s Patent Subject Matter Eligibility Interim Guidelines until June 30, 2006. The USPTO will publish a notice further extending the period for public comment on the USPTO’s Patent Subject Matter Eligibility Interim Guidelines if necessary to permit the comments to take into account the Court’s decision in LabCorp. Dated: December 14, 2005. Jon W. Dudas, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. E5–7552 Filed 12–19–05; 8:45 am] BILLING CODE 3510–16–P COMMODITY FUTURES TRADING COMMISSION Agency Information Collection Activities Under OMB Review Commodity Futures Trading Commission. ACTION: Notice. AGENCY: SUMMARY: In compliance with the Paperwork Reduction Act (44 U.S.C. 3501 et seq.), this notice announces that the Information Collection Request (ICR) PO 00000 Frm 00008 Fmt 4703 Sfmt 4703 abstracted below has been forwarded to the Office of Management and Budget (OMB) for review and comment. The ICR describes the nature of the information collection and its expected costs and burden; it includes the actual data collection instruments [if any]. DATES: Comments must be submitted on or before January 19, 2006. FOR FURTHER INFORMATION OR A COPY CONTACT: David Van Wagner, Division of Market Oversight, U.S. Commodity Futures Trading Commission, 1155 21st Street, NW., Washington, DC 20581, (202) 418–5481; FAX: (202) 418–5527; e-mail: dvanwagner@cftc.gov and refer to OMB Control No. 3038–0048. SUPPLEMENTARY INFORMATION: Title: Off-Exchange Agricultural Trade Options (OMB Control No. 3038–0048). This is a request for extension of a currently approved information collection. Abstract: Off-Exchange Agricultural Trade Options, OMB Control No. 3038– 0048—Extension. In April 1998, the Commodity Futures Trading Commission (Commission or CFTC) removed the prohibition on offexchange trade options on the enumerated agricultural commodities subject to a number of regulatory conditions. 63 FR 18821 (April 16, 1998). Thereafter, the Commission streamlined the regulatory or paperwork burdens in order to increase the utility of agricultural trade options while maintaining basic customer protections. 64 FR 68011 (Dec. 6, 1999). An agency may not conduct or sponsor, and a person is not required to respond to, a collection of information unless it displays a currently valid OMB control number. The OMB control numbers for the CFTC’s regulations were published on December 30, 1981. See 46 FR 63035 (Dec. 30, 1981). The Federal Register notice with a 60-day comment period soliciting comments on this collection of information was published on October 12, 2005 (70 FR 59319). Burden statement: The respondent burden for this collection is estimated to average 5.59 hours per response. Respondents/Affected Entities: 360. Estimated number of responses: 411. Estimated total annual burden on respondents: 2,391 hours. Frequency of collection: On occasion. Send comments regarding the burden estimated or any other aspect of the information collection, including suggestions for reducing the burden, to the addresses listed below. Please refer to OMB Control No. 3038–0048 in any correspondence. David Van Wagner, Division of Market Oversight, U.S. Commodity E:\FR\FM\20DEN1.SGM 20DEN1

Agencies

[Federal Register Volume 70, Number 243 (Tuesday, December 20, 2005)]
[Notices]
[Pages 75451-75452]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E5-7552]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: 2005-P-072]
RIN 0651-AB98


Request for Comments on Interim Guidelines for Examination of 
Patent Applications for Patent Subject Matter Eligibility

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (USPTO) has, in 
response to recent case law, revised its guidelines to be used by USPTO 
personnel in their review of patent applications to determine whether 
the claims in a patent application are directed to patent eligible 
subject matter. The USPTO is requesting comments from the public 
regarding these interim examination guidelines.
    Comment Deadline Date: To be ensured of consideration, written 
comments must be received on or before June 30, 2006. No public hearing 
will be held.

ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to AB98.Comments@uspto.gov. Comments may also be 
submitted by mail addressed to: Mail Stop Comments--Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313-1450, or 
by facsimile to (571) 273-0125, marked to the attention of Linda 
Therkorn. Although comments may be submitted by mail or facsimile, the 
Office prefers to receive comments via the Internet. If comments are 
submitted by mail, the Office prefers that the comments be submitted on 
a DOS formatted 3 1/2 inch disk accompanied by a paper copy.
    Comments may also be sent by electronic mail message over the 
Internet via the Federal eRulemaking Portal. See the Federal 
eRulemaking Portal Web site (https://www.regulations.gov) for additional 
instructions on providing comments via the Federal eRulemaking Portal.
    The comments will be available for public inspection at the Office 
of the Commissioner for Patents, located in Madison East, Tenth Floor, 
600 Dulany Street, Alexandria, Virginia, and will be available via the 
Office Internet Web site (address: https://www.uspto.gov). Because 
comments will be made available for public inspection, information that 
is not desired to be made public, such as an address or phone number, 
should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Linda Therkorn, Office of the Deputy 
Commissioner for Patent Examination Policy, by telephone at 571-272-
8800, or Ray Chen, Office of the Solicitor, by telephone at 571-272-
9035, by mail addressed to: Mail Stop Comments, P.O. Box 1450, 
Alexandria, VA, 22313-1450, or by facsimile transmission to 571-273-
0125, marked to the attention of Linda Therkorn or Ray Chen.

SUPPLEMENTARY INFORMATION: The USPTO has published a notice setting 
forth interim guidelines for the examination of patent applications for 
patent subject matter eligibility under 35 U.S.C. 101. See Interim 
Guidelines for Examination of Patent Applications for Patent Subject 
Matter Eligibility, 1300 Off. Gaz. Pat. Office 142 (Nov. 22, 2005) 
(Patent Subject Matter Eligibility Interim Guidelines).
    The Patent Subject Matter Eligibility Interim Guidelines are based 
on the USPTO's current understanding of the law and are believed to be 
fully consistent with binding precedent of the U.S. Supreme Court, the 
U.S. Court of Appeals for the Federal Circuit (Federal Circuit) and the 
Federal Circuit's predecessor courts. The Patent Subject Matter 
Eligibility Interim Guidelines do not constitute substantive rule 
making and hence do not have the force and effect of law. The Patent 
Subject Matter Eligibility Interim Guidelines have been designed to 
assist USPTO personnel in analyzing claimed subject matter for 
compliance with substantive law. Rejections will be based upon the 
substantive law and it is these rejections which are appealable. 
Consequently,

[[Page 75452]]

any failure by USPTO personnel to follow the Patent Subject Matter 
Eligibility Interim Guidelines is neither appealable nor petitionable.
    The Patent Subject Matter Eligibility Interim Guidelines merely 
revise USPTO examination practice for consistency with the USPTO's 
current understanding of the case law regarding patent subject matter 
eligibility under 35 U.S.C. 101. Therefore, the Patent Subject Matter 
Eligibility Interim Guidelines are interpretive or relate only to 
agency practice and procedure, and prior notice and an opportunity for 
public comment are not required under 5 U.S.C. 553(b)(A) (or any other 
law). Nevertheless, the USPTO is providing this opportunity for public 
comment because the USPTO desires the benefit of public comment on the 
Patent Subject Matter Eligibility Interim Guidelines.
    The USPTO is particularly interested in comments addressing the 
following questions:
    (1) While the Patent Subject Matter Eligibility Interim Guidelines 
explain that physical transformation of an article or physical object 
to a different state or thing to another establishes that a claimed 
invention is eligible for patent protection, Annex III to the Patent 
Subject Matter Eligibility Interim Guidelines explains that identifying 
that a claim transforms data from one value to another is not by itself 
sufficient for establishing that the claim is eligible for patent 
protection. Therefore, claims that perform data transformation must 
still be examined for whether there is a practical application of an 
abstract idea that produces a useful, concrete, and tangible result. Is 
the distinction between physical transformation and data transformation 
appropriate in the context of the Patent Subject Matter Eligibility 
Interim Guidelines? If not, please explain why and provide support for 
an alternative analysis.
    (2) Is the USPTO interpretation of State Street Bank & Trust Co. v. 
Signature Financial Group Inc., 149 F. 3d 1368, 47 USPQ2d 1596 (Fed. 
Cir. 1998), as holding that if there is no physical transformation, a 
claimed invention must necessarily, either expressly or inherently, 
produce a useful, concrete, and tangible result (rather than just be 
``capable of'' producing such a result) either too broad or too narrow? 
If so, please suggest an alternative interpretation and reasons 
therefor.
    (3) As the courts have yet to define the terms ``useful,'' 
``concrete,'' and ``tangible'' in the context of the practical 
application requirement, are the explanations provided in the Patent 
Subject Matter Eligibility Interim Guidelines sufficient? If not, 
please suggest alternative explanations.
    (4) What role should preemption have in the determination of 
whether a claimed invention is directed to a practical application of a 
35 U.S.C. 101 judicial exception?
    (5) Annex IV to the Patent Subject Matter Eligibility Interim 
Guidelines explains why the USPTO considers claims to signals per se, 
whether functional descriptive material or non-functional descriptive 
material, to be nonstatutory subject matter. Does the USPTO analysis 
represent a reasonable extrapolation of relevant case law? If not, 
please explain why and provide support for an alternative analysis. If 
claims directed to a signal per se are determined to be statutory 
subject matter, what is the potential impact on internet service 
providers, satellites, wireless fidelity (WiFi ^[reg]), and 
other carriers of signals?
    The USPTO also notes that the U.S. Supreme Court has granted 
certiorari in Laboratory Corp. of America Holdings v. Metabolite 
Laboratories, Inc., S.Ct. No. 04-607 (LabCorp). See 546 U.S. ---- (Nov. 
2, 2005). The USPTO expects that a decision in LabCorp will be rendered 
sometime before the end of June 2006. Since the Court's decision in 
LabCorp may impact the broader question of patent subject matter 
eligibility under 35 U.S.C. 101, the USPTO is extending the period for 
public comment on the USPTO's Patent Subject Matter Eligibility Interim 
Guidelines until June 30, 2006. The USPTO will publish a notice further 
extending the period for public comment on the USPTO's Patent Subject 
Matter Eligibility Interim Guidelines if necessary to permit the 
comments to take into account the Court's decision in LabCorp.

    Dated: December 14, 2005.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. E5-7552 Filed 12-19-05; 8:45 am]
BILLING CODE 3510-16-P

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