Changes to Practice for the Examination of Claims in Patent Applications, 61-69 [05-24529]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 71, Number 1 (Tuesday, January 3, 2006)]
[Proposed Rules]
[Pages 61-69]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 05-24529]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: 2005-P-067]
RIN 0651-AB94


Changes to Practice for the Examination of Claims in Patent 
Applications

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rule making.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
proposing to revise the rules of practice relating the examination of 
claims in patent applications. The Office is proposing to focus its 
initial examination on the claims designated by the applicant as 
representative claims. The representative claims will be all of the 
independent claims and only the dependent claims that are expressly 
designated by the applicant for initial examination. The Office is also 
proposing that if an application contains more than ten independent 
claims (a rare occurrence), or if the applicant wishes to have initial 
examination of more than ten representative claims, then the applicant 
must provide an examination support document that covers all of the 
independent claims and the dependent claims designated for initial 
examination. The changes proposed in this notice will allow the Office 
to do a better, more thorough and reliable examination since the number 
of claims receiving initial examination will be at a level which can be 
more effectively and efficiently evaluated by an examiner.
    Comment Deadline Date: To be ensured of consideration, written 
comments must be received on or before May 3, 2006. No public hearing 
will be held.

[[Page 62]]


ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to AB94Comments@uspto.gov. Comments may also be 
submitted by mail addressed to: Mail Stop Comments--Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-
1450, or by facsimile to (571) 273-7735, marked to the attention of 
Robert A. Clarke. 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: Robert A. Clarke, Deputy Director, 
Office of Patent Legal Administration, Office of the Deputy 
Commissioner for Patent Examination Policy, by telephone at (571) 272-
7735, by mail addressed to: Mail Stop Comments--Patents, Commissioner 
for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450, or by 
facsimile to (571) 273-7735, marked to the attention of Robert A. 
Clarke, or preferably via electronic mail message addressed to: 
robert.clarke@uspto.gov.

SUPPLEMENTARY INFORMATION: The Office's current practice for 
examination of claims in patent applications provides for an initial 
examination of each and every claim, independent and dependent, in 
every Office action on the merits of the application. The Office's 
current practice for examination of claims in patent applications is 
less efficient than it could be because it requires an initial 
patentability examination of every claim in an application, 
notwithstanding that this effort is wasted when the patentability of 
the dependent claims stand or fall together with the independent claim 
from which they directly or indirectly depend. Thus, the Office is 
proposing to delay the patentability examination of most dependent 
claims until the application is otherwise in condition for allowance. 
The Office, however, will examine every claim in an application before 
issuing a patent on the application.
    Both the Board of Patent Appeals and Interferences (BPAI) and the 
courts commonly employ some form of using representative claims to 
focus and manage issues in a case. The BPAI's representative claim 
practice provides that if the applicant desires the BPAI to consider 
the patentability of a claim separately from the other claims also 
subject to the same ground of rejection, the applicant must include a 
subheading in the arguments section of the appeal brief setting out an 
argument for the separate patentability of the claim. See 37 CFR 
41.37(c)(1)(vii). If there are multiple claims subject to the same 
ground of rejection and the applicant argues the patentability of the 
claims as a group, the BPAI will select a claim from the group of 
claims and decide the appeal with respect to that group of claims on 
the basis of the selected claim alone. See id.
    The Office plans to apply a similar practice to the BPAI's 
representative claim practice to the examination of patent 
applications. Specifically, the Office will provide an initial 
patentability examination to the claims designated by the applicant as 
representative claims. The representative claims will be all of the 
independent claims and the dependent claims that are expressly 
designated by the applicant for initial examination. Thus, each 
independent claim and each dependent claim that is designated for 
initial examination will be treated as a representative claim for 
examination purposes. The examination of the dependent claims that are 
not designated for initial examination will be deferred until the 
application is otherwise in condition for allowance. Specifically, 
applicants will be required to assist the Office in eliminating 
unnecessary effort by permitting the Office to provide an initial 
examination to a more focused set of claims; that is, only to the 
independent and designated dependent claims. The Office will continue 
its practice of withdrawing from further consideration claims that are 
drawn to a non-elected invention.
    The Office previously requested comments on a proposal to limit the 
number of total and independent claims that would be examined in an 
application. See Changes to Implement the Patent Business Goals, 63 FR 
53497, 53506-08 (Oct. 5, 1998), 1215 Off. Gaz. Pat. Office 87, 95-97 
(Oct. 27, 1998). The Office, however, ultimately decided not to proceed 
with a proposed change to 37 CFR 1.75 to limit the number of total and 
independent claims that would be examined in an application. See 
Changes to Implement the Patent Business Goals, 64 FR 53771, 53774-75 
(Oct. 4, 1999), 1228 Off. Gaz. Pat. Office 15, 17-18 (Nov. 2, 1999). 
Nevertheless, applications which contain a large number of claims 
continue to absorb an inordinate amount of patent examining resources, 
as they are extremely difficult to properly process and examine. The 
Office is now proposing changes to its practice for examination of 
claims in patent applications that avoids placing limits on the number 
of total or independent claims that may be presented for examination in 
an application, but does share with an applicant who presents more than 
a sufficiently limited number of claims for simultaneous examination 
the burden so imposed. Specifically, an applicant who declines to 
designate fewer than ten representative claims for initial examination 
will be required to assist the Office with this more extensive 
examination by providing an examination support document covering all 
of the claims designated for initial examination.
    The Office is proposing the following changes to the rules of 
practice in title 37 of the Code of Federal Regulations (CFR) for the 
examination of claims in an application: First, the Office will give an 
initial examination only to the representative claims, namely, all of 
the independent claims and only the dependent claims that are expressly 
designated for initial examination. Second, if the number of 
representative claims is greater than ten, the Office will require the 
applicant to share the burden of examining the application by 
submitting an examination support document covering all of the 
representative claims.
    The Office's Patent Application Locating and Monitoring (PALM) 
records show that the Office has received 216,327 nonprovisional 
applications since January 1, 2005 (based upon PALM records as of 
October 13, 2005). The Office's PALM records show that only 2,522 (866 
small entity), or about 1.2 percent of all nonprovisional applications, 
included more than ten independent claims. Thus, this proposal will 
allow for the examination of every independent claim in 98.8 percent of 
the applications filed since January 1, 2005, without any additional 
effort by the applicant.

[[Page 63]]

    The Office conducted a random survey of five hundred applications 
in which an appeal brief was filed in fiscal year 2004. Only nine 
applications out of these five-hundred applications (1.8 percent) had 
more than ten representative claims. In addition, the average and 
median numbers of representative claims in these five hundred appeals 
were 2.73 and 2, respectively.
    The Office currently has a procedure for requesting accelerated 
examination under which an application will be taken out of turn for 
examination if the applicant files a petition to make special and 
(inter alia):

    Submits a statement(s) that a pre-examination search was made, 
listing the field of search by class and subclass, publication, 
Chemical Abstracts, foreign patents, etc. The pre-examination search 
must be directed to the invention as claimed in the application for 
which special status is requested. A search made by a foreign patent 
office satisfies this requirement if the claims in the corresponding 
foreign application are of the same or similar scope to the claims 
in the U.S. application for which special status is requested;
    Submits one copy each of the references deemed most closely 
related to the subject matter encompassed by the claims if said 
references are not already of record; and
    Submits a detailed discussion of the references, which 
discussion points out, with the particularity required by 37 CFR 
1.111(b) and (c), how the claimed subject matter is patentable over 
the references.

    See Manual of Patent Examining Procedure Sec.  708.02 (8th ed. 
2001) (Rev. 3, August 2005) (MPEP). Based upon the Office's PALM 
records, it appears that about 1,225 applicants have filed a petition 
to make special under this accelerated examination procedure to date in 
fiscal year 2005. The proposed examination support document 
requirements are similar to the requirements set forth in MPEP Sec.  
708.02 for having an application taken out of turn for examination 
under this accelerated examination procedure.
    These changes will mean faster more effective examination for the 
typical applicant without any additional work on the applicant's part, 
but a small minority of applicants who place an extensive burden on the 
Office's ability to effectively examine applications will be required 
to assist the Office in handling the burden they place on the Office.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is proposed to 
be amended as follows:
    Section 1.75: Section 1.75(b) (introductory text) is proposed to be 
amended to set forth the provisions concerning dependent claims that 
are currently in Sec.  1.75(c), namely, that ``[o]ne or more claims may 
be presented in dependent form, referring back to and further limiting 
another claim or claims in the same application,'' and that ``[c]laims 
in dependent form shall be construed to include all the limitations of 
the claim incorporated by reference into the dependent claim.'' Section 
1.75(b) (introductory text) is further proposed to be amended to 
provide that unless a dependent claim has been designated for initial 
examination prior to the application being taken up for examination, 
the examination of such dependent claim may be held in abeyance until 
the application is otherwise in condition for allowance. See also 
proposed Sec.  1.104(b). As discussed previously, the Office will 
provide an initial patentability examination to each of the 
representative claims. If the applicant fails to designate any 
dependent claim for initial examination, the Office will initially 
examine only the independent claims. Thus, the applicant must expressly 
designate which (if any) dependent claims are to be given initial 
examination, even if there are ten or fewer total (independent and 
dependent) claims in the application. Section 1.75(b) (introductory 
text) is further proposed to be amended to provide that the mere 
presentation of a dependent claim in an application is not a 
designation of the dependent claim for initial examination. An 
applicant may designate one or more dependent claims for initial 
examination in the transmittal letter or in a separate paper, but the 
mere inclusion of a dependent claim in an application will not be 
considered a designation of the dependent claim for initial 
examination.
    Section 1.75(b)(1) is proposed to provide that an applicant must 
submit an examination support document in compliance with Sec.  1.261 
that covers each representative claim if either: (1) The application 
contains, or is amended to contain, more than ten independent claims; 
or (2) the number of representative claims (i.e., the independent 
claims plus the number of dependent claims designated for initial 
examination) is greater than ten. Thus, the applicant may designate a 
number of dependent claims up to ten minus the number of independent 
claims in the application to be given initial examination without 
filing an examination support document under proposed Sec.  1.261. For 
example, if an application contains three independent claims and a 
total of twenty claims, the applicant may designate up to seven (ten 
minus three) dependent claims for initial examination without filing an 
examination support document under Sec.  1.261.
    Proposed Sec.  1.75(b)(1) further provides that a dependent claim 
(including a multiple dependent claim) designated for examination must 
depend only from a claim or claims that are also designated for 
examination. Thus, if dependent claim 3 depends upon dependent claim 2, 
which in turn depends upon independent claim 1, the applicant cannot 
designate claim 3 for initial examination without also designating 
claim 2 for initial examination. Likewise, if multiple dependent claim 
4 depends (in the alternative) upon dependent claim 3 and dependent 
claim 2, and claim 3 and claim 2 each depend upon independent claim 1, 
the applicant cannot designate claim 4 for initial examination without 
also designating claim 3 and claim 2 for initial examination.
    Proposed Sec.  1.75(b)(2) provides for claims in dependent form 
that are effectively independent claims. Proposed Sec.  1.75(b)(2) 
provides that a claim that refers to another claim but does not 
incorporate by reference all of the limitations of the claim to which 
such claim refers will be treated as an independent claim for fee 
calculation purposes under Sec.  1.16 (or Sec.  1.492) and for purposes 
of Sec.  1.75(b)(1). The Office must treat such claims as independent 
claims because 35 U.S.C. 112, ] 4, provides (inter alia) that a 
dependent ``shall be construed to incorporate by reference all the 
limitations of the claim to which it refers.'' See 35 U.S.C. 112, ] 4. 
Examples of claims that appear to be a dependent claim but are in 
actuality an independent claim that references another claim in short-
hand form without incorporating by reference all the limitations of the 
claim to which it refers are included in the applications at issue in 
the following decisions: In re Thorpe, 777 F.2d 695, 696, 227 USPQ 964, 
965 (Fed. Cir. 1985) (``product by process'' claim 44); In re Kuehl, 
475 F.2d 658, 659, 177 USPQ 250, 251 (CCPA 1973) (claim 6); and Ex 
parte Rao, 1995 WL 1747720, *1 (BPAI 1998) (claim 8). Proposed Sec.  
1.75(b)(2) also provides that a claim that refers to a claim of a 
different statutory class of invention will be treated as an 
independent claim for fee calculation purposes under Sec.  1.16 (or 
Sec.  1.492) and for purposes of paragraph (b)(1) of this section. 
Examples of such claims are included in the applications at issue in 
the following decisions: Thorpe, 777 F.2d at 696, 227 USPQ at 965 
(``product by process'' claim 44); Ex parte Porter,

[[Page 64]]

25 USPQ2d 1144, 1145 (BPAI 1992) (claim 6); and Ex parte Blattner, 2 
USPQ2d 2047, 2047-48 (BPAI 1987) (claim 14).
    Section 1.75(b)(3) is proposed to provide that the applicant will 
be notified if an application contains or is amended to contain more 
than ten independent claims, or the number of independent claims plus 
the number of dependent claims designated for initial examination is 
greater than ten, but an examination support document under Sec.  1.261 
has been omitted (proposed Sec.  1.75(b)(3)). Proposed Sec.  1.75(b)(3) 
further provides that if prosecution of the application is not closed 
and it appears that omission was inadvertent, the notice will set a 
one-month time period that is not extendable under Sec.  1.136(a) 
within which to avoid abandonment of the application the applicant 
must: (1) File an examination support document in compliance with Sec.  
1.261; (2) cancel the requisite number of independent claims and 
rescind the designation for initial examination of the requisite number 
of dependent claims that necessitate an examination support document in 
compliance with Sec.  1.261; or (3) submit a suggested requirement for 
restriction accompanied by an election without traverse of an invention 
to which there are drawn fewer than ten independent claims and fewer 
than the residual number of designated dependent claims. The phrase 
``an application in which prosecution is not closed'' means an 
application that is not under appeal, and in which the last Office 
action on the merits is not a final action (Sec.  1.113), a notice of 
allowance (Sec.  1.311), or an action that otherwise closes prosecution 
in the application. The submission of additional claims after close of 
prosecution would be treated under the provisions of Sec. Sec.  1.116, 
1.312, 41.33 or 41.110. Due to the increase in patent pendency that 
would result from the routine granting of extensions in these 
situations, the Office is limiting extensions of this one-month time 
period to those for which there is sufficient cause (Sec.  1.136(b)).
    Section 1.75(b)(4) is proposed to provide for the situation in 
which: (1) A nonprovisional application contains at least one claim 
that is patentably indistinct from at least one claim in one or more 
other nonprovisional applications or patents; and (2) the one or more 
other nonprovisional applications or patents either name at least one 
inventor in common and are owned by the same person as the 
nonprovisional application, or are subject to an obligation of 
assignment to the same person as the first nonprovisional application; 
and (3) the at least one patentably indistinct claim has support under 
35 U.S.C. 112, ] 1, in the earliest of such one or more other 
nonprovisional applications or patents. Proposed Sec.  1.75(b)(4) 
provides that in this situation, the Office may require elimination of 
the patentably indistinct claims from all but one of the nonprovisional 
applications. In addition, proposed Sec.  1.75(b)(4) provides that if 
the patentably indistinct claims are not eliminated from all but one of 
the nonprovisional applications, the Office will treat the independent 
claims and the dependent claims designated for initial examination in 
the first nonprovisional application and in each of such other 
nonprovisional applications or patents as present in each of the 
nonprovisional applications for purposes of Sec.  1.75(b)(1). That is, 
if the conditions specified in proposed Sec.  1.75(b)(4)) are present, 
the Office would treat each such nonprovisional application as having 
the total of all of the representative claims for purposes of 
determining whether an examination support document is required by 
proposed Sec.  1.75(b)(1) (but not for purposes of calculating the 
excess claims fee due in each such nonprovisional application).
    If two or more inventions are claimed in an application, the 
examiner may, if appropriate, still require that the application be 
restricted to a single invention. The criteria for making such a 
restriction requirement would remain the same. Any restriction 
requirement would be based on all the claims pending in the 
application, and not just the claims designated for initial 
examination. If the examiner makes a restriction requirement and 
applicant's election results in representative claims being withdrawn 
from consideration, applicant may designate additional representative 
claims for initial examination without filing an examination support 
document under proposed Sec.  1.261 so long as the total number of 
representative claims drawn to the elected invention does not exceed 
ten. Any additional dependent claims designated for initial examination 
must be drawn to the elected invention. The designation of the 
additional dependent claims must be made in the reply to the 
restriction requirement or as permitted by the examiner.
    The Office is also requesting comments on how claims written in the 
alternative form, such as claims in an alternative form permitted by Ex 
parte Markush, 1925 Dec. Comm'r Pat. 126 (1924), should be counted for 
purposes of proposed Sec.  1.75(b)(1). Should the Office simply count 
each alternative in the claim as a separate claim for purposes of Sec.  
1.75(b)(1)? Should the Office count each alternative in the claim as a 
separate claim for purposes of Sec.  1.75(b)(1) unless the applicant 
shows that each alternative in the claim includes a common core 
structure and common core property or activity, in which the common 
core structure constitutes a structurally distinctive portion in view 
of existing prior art and is essential to the common property or 
activity (see MPEP 1850)?
    Section 1.75(c) is proposed to be amended to provide only for 
multiple dependent claims (with dependent claims being provided for in 
Sec.  1.75(b)), and to further provide that multiple dependent claims 
and claims depending from a multiple dependent claim will be considered 
to be that number of claims to which direct reference is made in the 
multiple dependent claim for purposes of Sec.  1.75(b)(1).
    Section 1.104: Section 1.104(a)(1) is proposed to be amended to 
change ``invention as claimed'' to ``invention as claimed in the 
independent and designated dependent claims'' for consistency with the 
change to examination practice. The Office plans to generally delay the 
patentability examination of any dependent claim that was not 
designated for initial examination until the application is otherwise 
in condition for allowance.
    Section 1.104(b) is proposed to be amended to add that ``[t]he 
examination of a dependent claim that has not been designated for 
initial examination may be held in abeyance until the application is 
otherwise in condition for allowance.''
    Section 1.104(c) is proposed to be amended to change ``[i]f the 
invention is not considered, or not considered patentable as claimed'' 
to ``[i]f the invention claimed in the independent and designated 
dependent claims is not considered patentable'' for consistency with 
the proposed change to examination practice.
    Section 1.105: Section 1.105(a)(1) is proposed to be amended to 
provide that an applicant may be required to set forth where (by page 
and line or paragraph number) the specification of the application, or 
any application the benefit of whose filing date is sought under title 
35, United States Code, provides written description support for the 
invention as defined in the claims (independent or dependent), and of 
manner and process of making and using it, in such full, clear, 
concise, and exact terms as to enable any person skilled in the art to 
which it pertains, or with which it is most nearly connected, to make 
and use the invention, under 35

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U.S.C. 112, ] 1. Therefore, in situations in which it is not readily 
apparent where the specification of the application, or an application 
for which a benefit is claimed, provides written description support 
under 35 U.S.C. 112, ] 1, for a claim or a limitation of a claim, the 
examiner may require the applicant to provide such information. The 
Office considers this authority to be inherent under the patent statute 
and existing rules (including current Sec.  1.105), but is proposing to 
amend Sec.  1.105 to make the authority explicit. See MPEP 2163.04.
    Section 1.117: The Consolidated Appropriations Act 2005 
(Consolidated Appropriations Act), provides that 35 U.S.C. 41(a), (b), 
and (d) shall be administered in a manner that revises patent 
application fees (35 U.S.C. 41(a)) and patent maintenance fees (35 
U.S.C. 41(b)), and provides for a separate filing fee (35 U.S.C. 
41(a)), search fee (35 U.S.C. 41(d)(1)), and examination fee (35 U.S.C. 
41(a)(3)) during fiscal years 2005 and 2006. See Pub. L. 108-447, 118 
Stat. 2809 (2004). The Consolidated Appropriations Act also provides 
that the Office may, by regulation, provide for a refund of any part of 
the excess claim fee specified in 35 U.S.C. 41(a)(2) for any claim that 
is canceled before an examination on the merits has been made of the 
application under 35 U.S.C. 131. See 35 U.S.C. 41(a)(2) (as 
administered during fiscal years 2005 and 2006 pursuant to the 
Consolidated Appropriations Act). Section 1.117 is proposed to be added 
to implement this provision of the Consolidated Appropriations Act. 
Proposed Sec.  1.117(a) provides that if an amendment canceling a claim 
is submitted in reply to a notice under Sec.  1.75(b)(3) and prior to 
the first examination on the merits of the application, the applicant 
may request a refund of any fee paid on or after December 8, 2004, for 
such claim under Sec.  1.16(h), (i), or (j) or under Sec.  1.492(d), 
(e), or (f). Thus, if an applicant decides to cancel the claims 
necessitating an examination support document under Sec.  1.261, rather 
than provide an examination support document in compliance with Sec.  
1.261, the applicant may request a refund of any fee paid on or after 
December 8, 2004, for such claim under Sec.  1.16(h), (i), or (j) or 
under Sec.  1.492(d), (e), or (f). As the Consolidated Appropriations 
Act authorizes a refund only for a claim that has been canceled before 
an examination on the merits has been made of the application under 35 
U.S.C. 131, the Office cannot grant a refund on the basis of the mere 
rescission of a designation of a dependent claim for initial 
examination (rather than cancellation of the dependent claim), or on 
the basis of the cancellation of a claim after an examination on the 
merits has been made of the application under 35 U.S.C. 131. If an 
amendment adding one or more claims is also filed before the 
application has been taken up for examination on the merits, the Office 
may apply first any refund under Sec.  1.117 resulting from the 
cancellation of one or more claims to any excess claims fees due as a 
result of such an amendment.
    Proposed Sec.  1.117(b) provides that a claim in an application 
filed under 35 U.S.C. 111(a) will also be considered canceled for 
purposes of this section if a declaration of express abandonment under 
Sec.  1.138(d) has been filed in an application containing such claim 
in sufficient time to permit the appropriate officials to recognize the 
abandonment and remove the application from the files for examination 
before the application has been taken up for examination.
    Proposed Sec.  1.117(c) provides that any request for refund under 
this section must be filed within two months from the date on which the 
claim was canceled, and that this two-month period is not extendable.
    The patent fee provisions of the Consolidated Appropriations Act 
expire (in the absence of subsequent legislation) on September 30, 2006 
(at the end of fiscal year 2006). Therefore, in the absence of 
subsequent legislation, the refund provision in proposed Sec.  1.117 
will likewise expire on September 30, 2006 (at the end of fiscal year 
2006), regardless of the date on which the excess claims fee was paid.
    Section 1.261: Section 1.261 is proposed to be added to set forth 
what an ``examination support document'' (proposed to be required under 
Sec.  1.75(b)(1)) entails.
    Proposed Sec.  1.261(a) provides that an examination support 
document as used in 37 CFR part 1 means a document that includes: (1) A 
statement that a preexamination search was conducted, including an 
identification (in the manner set forth in MPEP Sec.  719) of the field 
of search by class and subclass and the date of the search, where 
applicable, and, for database searches, the search logic or chemical 
structure or sequence used as a query, the name of the file or files 
searched and the database service, and the date of the search; (2) an 
information disclosure statement in compliance with Sec.  1.98 citing 
the reference or references deemed most closely related to the subject 
matter of each of the independent claims and designated dependent 
claims; (3) an identification of all the limitations of the independent 
claims and designated dependent claims that are disclosed by the 
references cited; (4) a detailed explanation of how each of the 
independent claims and designated dependent claims are patentable over 
the references cited with the particularity required by Sec.  1.111(b) 
and (c); (5) a concise statement of the utility of the invention as 
defined in each of the independent claims; and (6) a showing of where 
each limitation of the independent claims and the designated dependent 
claims finds support under 35 U.S.C. 112, ] 1, in the written 
description of the specification (and if the application claims the 
benefit of one or more applications under title 35, United States Code, 
the showing must also include where each limitation of the independent 
claims and the designated dependent claims finds support under 35 
U.S.C. 112, ] 1, in each such application in which such support 
exists).
    Section 1.133(a)(2) was recently amended to permit an interview 
before first Office action in any application if the examiner 
determines that such an interview would advance prosecution of the 
application. If the examiner, after considering the application and 
examination support document, still has questions concerning the 
invention or how the claims define over the prior art or are 
patentable, the examiner may request an interview before first Office 
action. If the applicant declines such a request for an interview or if 
the interview does not result in the examiner obtaining the necessary 
information, the examiner may issue a requirement for information under 
Sec.  1.105 to obtain such information.
    Proposed Sec.  1.261(b) provides that the preexamination search 
referred to in Sec.  1.261(a)(1) must involve U.S. patents and patent 
application publications, foreign patent documents, and non-patent 
literature, unless the applicant can justify with reasonable certainty 
that no references more pertinent than those already identified are 
likely to be found in the eliminated source and includes such a 
justification with the statement required by Sec.  1.261(a)(1). 
Proposed Sec.  1.261(b) also provides that the preexamination search 
referred to in Sec.  1.261(a)(1) must encompass all of the features of 
the independent claims and must cover all of the features of the 
designated dependent claims separately from the claim or claims from 
which the dependent claim depends, giving the claims the broadest 
reasonable interpretation. A search report from a foreign patent office 
will not satisfy the requirement in Sec.  1.261(a)(1) for a

[[Page 66]]

preexamination search unless the search report satisfies the 
requirements for a preexamination search set forth in Sec.  1.261.
    Proposed Sec.  1.261(c) provides that the applicant will be 
notified and given a one-month time period within which to file a 
corrected or supplemental examination support document to avoid 
abandonment if: (1) The examination support document or pre-examination 
search is deemed to be insufficient; (2) an explanation of the 
invention or how the independent and designated dependent claims define 
the invention is deemed necessary; or (3) the claims have been amended 
such that the examination support document no longer covers each 
independent claim. Proposed Sec.  1.261(c) further provides that this 
one-month period is not extendable under Sec.  1.136(a).
    Section 1.704: Section 1.704(c) is proposed to be amended to 
provide that the failure to file an examination support document in 
compliance with Sec.  1.261 when necessary under Sec.  1.75(b) is a 
circumstance that constitutes a failure of an applicant to engage in 
reasonable efforts to conclude processing or examination of an 
application under 35 U.S.C. 154(b)(2)(C) because the failure to provide 
an examination support document in compliance with Sec.  1.261 when 
necessary under Sec.  1.75(b) will delay processing or examination of 
an application because the Office must issue a notice and await the 
applicant's reply before examination of the application may begin. 
Therefore, proposed Sec.  1.704(c) provides that where there is a 
failure to file an examination support document in compliance with 
Sec.  1.261 when necessary under Sec.  1.75(b), the period of 
adjustment set forth in Sec.  1.703 shall be reduced by the number of 
days, if any, beginning on the day after the date that is the later of 
the filing date of the amendment necessitating an examination support 
document in compliance with Sec.  1.261, or four months from the filing 
date of the application in an application under 35 U.S.C. 111(a) or 
from the date on which the national stage commenced under 35 U.S.C. 
371(b) or (f) in an application which entered the national stage from 
an international application after compliance with 35 U.S.C. 371, and 
ending on the date that either an examination support document in 
compliance with Sec.  1.261, or an amendment, a suggested restriction 
requirement and election (Sec.  1.75(b)(3)(iii)) that obviates the need 
for an examination support document under Sec.  1.261, was filed.
    The proposed changes to Sec. Sec.  1.75 and 1.104 (if adopted) 
would be applicable to any application filed on or after the effective 
date of the final rule, as well as to any application in which a first 
Office action on the merits (Sec.  1.104) was not mailed before the 
effective date of the final rule. The Office will provide applicants 
who filed their applications before the effective date of the final 
rule and who would be affected by the changes in the final rule with an 
opportunity to designate dependent claims for initial examination, and 
to submit either an examination support document under Sec.  1.261 
(proposed) or a new set of claims to avoid the need for an examination 
support document (if necessary). The Office appreciates that making the 
changes in the final rule also applicable to certain applications filed 
before its effective date will cause inconvenience to some applicants. 
The Office is also requesting suggestions for ways in which the Office 
can make the changes in the final rule also applicable to these pending 
applications with a minimum of inconvenience to such applicants.
    Regulatory Flexibility Act: For the reasons set forth herein, the 
Deputy General Counsel for General Law of the United States Patent and 
Trademark Office has certified to the Chief Counsel for Advocacy of the 
Small Business Administration that changes proposed in this notice will 
not have a significant economic impact on a substantial number of small 
entities. See 5 U.S.C. 605(b).
    This notice proposes to require an examination support document 
that covers each independent claim and each dependent claim designated 
for initial examination if: (1) The application contains or is amended 
to contain more than ten independent claims; or (2) the number of 
independent claims plus the number of dependent claims designated for 
initial examination is greater than ten. There are no fees associated 
with this proposed rule change.
    The changes proposed in this notice will not affect a substantial 
number of small entities. The Office's PALM records (PALM records as of 
October 13, 2005) show that the Office has received 216,327 
nonprovisional applications (65,785 small entity) since January 1, 
2005, with about 2,522 (866 small entity) of these nonprovisional 
applications including more than ten independent claims. Thus, since 
January 1, 2005, only 1.2 percent of all nonprovisional applications 
and 1.3 percent of the small entity nonprovisional applications contain 
or were amended to contain more than ten independent claims. In 
addition, Office experience is that most applications which contain 
more than ten independent claims contain claims that are directed to 
inventions that are independent and distinct under 35 U.S.C. 121, and 
the proposed rule permits an applicant to avoid submitting an 
examination support document by suggesting a requirement for 
restriction accompanied by an election of an invention to which there 
are drawn no more than ten independent claims. Therefore, the Office 
estimates that the proposed examination support document requirement 
would not impact a substantial number of small entities. It is also 
noted that the proposed rule change would not disproportionately impact 
small entity applicants.
    The changes proposed in this notice will not have a significant 
economic impact upon small entities. The primary impact of this change 
would be to require applicants who submit an excessive number of claims 
to share the burden of examining the application by filing an 
examination support document covering the independent claims and the 
designated dependent claims. There are no fees associated with this 
proposed rule change. The American Intellectual Property Law 
Association (AIPLA) 2003 Report of the Economic Survey indicates that 
the seventy-fifth percentile charge (for those reporting) for a patent 
novelty search, analysis, and opinion was $2,500.00. Given that the 
pre-filing preparation of an application containing more than ten 
independent claims should involve obtaining such a patent novelty 
search, analysis, and opinion, the Office does not consider the 
additional cost of providing an examination support document to be a 
significant economic impact on an applicant who is submitting an 
application containing more than ten independent claims. In any event, 
any applicant may avoid the costs of such an examination support 
document simply by refraining from presenting more than ten independent 
claims in an application.
    Executive Order 13132: This rule making does not contain policies 
with federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
    Executive Order 12866: This rule making has been determined to be 
significant for purposes of Executive Order 12866 (Sept. 30, 1993).
    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

[[Page 67]]

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. This notice 
proposes to require an examination support document that covers each 
independent claim and each dependent claim designated for initial 
examination if: (1) The application contains or is amended to contain 
more than ten independent claims; or (2) the number of independent 
claims plus the number of dependent claims designated for initial 
examination is greater than ten. The United States Patent and Trademark 
Office is resubmitting an information collection package to OMB for its 
review and approval because the changes in this notice do affect the 
information collection requirements associated with the information 
collection under OMB control number 0651-0031.
    The title, description and respondent description of the 
information collection under OMB control number 0651-0031 is shown 
below with an estimate of the annual reporting burdens. Included in the 
estimate is the time for reviewing instructions, gathering and 
maintaining the data needed, and completing and reviewing the 
collection of information.
    OMB Number: 0651-0031.
    Title: Patent Processing (Updating).
    Form Numbers: PTO/SB/08, PTO/SB/17i, PTO/SB/17p, PTO/SB/21-27, PTO/
SB/24B, PTO/SB/30-32, PTO/SB/35-39, PTO/SB/42-43, PTO/SB/61-64, PTO/SB/
64a, PTO/SB/67-68, PTO/SB/91-92, PTO/SB/96-97, PTO-2053-A/B, PTO-2054-
A/B, PTO-2055-A/B, PTOL-413A.
    Type of Review: Approved through July of 2006.
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions, Farms, Federal 
Government and State, Local and Tribal Governments.
    Estimated Number of Respondents: 2,284,439.
    Estimated Time Per Response: 1 minute and 48 seconds to 12 hours.
    Estimated Total Annual Burden Hours: 2,732,441 hours.
    Needs and Uses: During the processing of an application for a 
patent, the applicant or applicant's representative may be required or 
desire to submit additional information to the United States Patent and 
Trademark Office concerning the examination of a specific application. 
The specific information required or which may be submitted includes: 
Information disclosure statement and citation, examination support 
documents, requests for extensions of time, the establishment of small 
entity status, abandonment and revival of abandoned applications, 
disclaimers, appeals, petitions, expedited examination of design 
applications, transmittal forms, requests to inspect, copy and access 
patent applications, publication requests, and certificates of mailing, 
transmittals, and submission of priority documents and amendments.
    Comments are invited on: (1) Whether the collection of information 
is necessary for proper performance of the functions of the agency; (2) 
the accuracy of the agency's estimate of the burden; (3) ways to 
enhance the quality, utility, and clarity of the information to be 
collected; and (4) ways to minimize the burden of the collection of 
information to respondents.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reducing this 
burden, to: (1) the Office of Information and Regulatory Affairs, 
Office of Management and Budget, New Executive Office Building, Room 
10202, 725 17th Street, NW., Washington, DC 20503, Attention: Desk 
Officer for the Patent and Trademark Office; and (2) Robert J. Spar, 
Director, Office of Patent Legal Administration, Commissioner for 
Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
    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.

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.

    For the reasons set forth in the preamble, 37 CFR part 1 is 
proposed to be amended as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for 37 CFR part 1 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2).

    2. Section 1.75 is amended by revising paragraphs (b) and (c) to 
read as follows:


Sec.  1.75  Claim(s)

* * * * *
    (b) More than one claim may be presented provided they differ 
substantially from each other and are not unduly multiplied. One or 
more claims may be presented in dependent form, referring back to and 
further limiting another claim or claims in the same application. 
Claims in dependent form shall be construed to include all the 
limitations of the claim incorporated by reference into the dependent 
claim. Unless a dependent claim has been designated for initial 
examination prior to when the application has been taken up for 
examination, the examination of such dependent claim may be held in 
abeyance until the application is otherwise in condition for allowance. 
The mere presentation of a dependent claim in an application is not a 
designation of the dependent claim for initial examination.
    (1) An applicant must submit an examination support document in 
compliance with Sec.  1.261 that covers each independent claim and each 
dependent claim designated for initial examination if either:
    (i) The application contains or is amended to contain more than ten 
independent claims; or
    (ii) The number of independent claims plus the number of dependent 
claims designated for initial examination is greater than ten. A 
dependent claim (including a multiple dependent claim) designated for 
initial examination must depend only from a claim or claims that are 
also designated for initial examination.
    (2) A claim that refers to another claim but does not incorporate 
by reference all of the limitations of the claim to which such claim 
refers will be treated as an independent claim for fee calculation 
purposes under Sec.  1.16 (or Sec.  1.492) and for purposes of 
paragraph (b)(1) of this section. A claim that refers to a claim of a 
different statutory class of invention will also be treated as an 
independent claim for fee calculation purposes under Sec.  1.16 (or 
Sec.  1.492) and for purposes of paragraph (b)(1) of this section.
    (3) The applicant will be notified if an application contains or is 
amended to contain more than ten independent claims, or the number of 
independent claims plus the number of dependent claims designated for 
initial examination in such an application is greater than ten, but an 
examination support document under Sec.  1.261 has been omitted. If 
prosecution of the application is not closed and it appears that 
omission was inadvertent, the notice will set a one-month time period 
that is not extendable under Sec.  1.136(a) within which, to avoid 
abandonment of the application, the applicant must:

[[Page 68]]

    (i) File an examination support document in compliance with Sec.  
1.261 that covers each independent claim and each dependent claim 
designated for initial examination;
    (ii) Cancel the requisite number of independent claims and rescind 
the designation for initial examination of the requisite number of 
dependent claims that necessitate an examination support document under 
Sec.  1.261; or
    (iii) Submit a suggested requirement for restriction accompanied by 
an election without traverse of an invention to which there are drawn 
no more than ten independent claims as well as no more than ten total 
independent claims and dependent claims designated for initial 
examination.
    (4) If a nonprovisional application contains at least one claim 
that is patentably indistinct from at least one claim in one or more 
other nonprovisional applications or patents, and if such one or more 
other nonprovisional applications or patents and the first 
nonprovisional application are owned by the same person, or are subject 
to an obligation of assignment to the same person, and if such 
patentably indistinct claim has support under the first paragraph of 35 
U.S.C. 112 in the earliest of such one or more other nonprovisional 
applications or patents, the Office may require elimination of the 
patentably indistinct claims from all but one of the nonprovisional 
applications. If the patentably indistinct claims are not eliminated 
from all but one of the nonprovisional applications, the Office will 
treat the independent claims and the dependent claims designated for 
initial examination in the first nonprovisional application and in each 
of such other nonprovisional applications or patents as present in each 
of the nonprovisional applications for purposes of paragraph (b)(1) of 
this section.
    (c) Any dependent claim which refers to more than one other claim 
(``multiple dependent claim'') shall refer to such other claims in the 
alternative only. A multiple dependent claim shall not serve as a basis 
for any other multiple dependent claim. For fee calculation purposes 
under Sec.  1.16 (or Sec.  1.492) and for purposes of paragraph (b)(1) 
of this section, a multiple dependent claim will be considered to be 
that number of claims to which direct reference is made therein. For 
fee calculation purposes under Sec.  1.16 (or Sec.  1.492) and for 
purposes of paragraph (b)(1) of this section, any claim depending from 
a multiple dependent claim will be considered to be that number of 
claims to which direct reference is made in that multiple dependent 
claim. In addition to the other filing fees, any original application 
which is filed with, or is amended to include, multiple dependent 
claims must have paid therein the fee set forth in Sec.  1.16(j). A 
multiple dependent claim shall be construed to incorporate by reference 
all the limitations of each of the particular claims in relation to 
which it is being considered.
* * * * *
    3. Section 1.104 is amended by revising paragraphs (a)(1), (b), and 
(c)(1) to read as follows:


Sec.  1.104  Nature of examination.

    (a) Examiner's action. (1) On taking up an application for 
examination or a patent in a reexamination proceeding, the examiner 
shall make a thorough study thereof and shall make a thorough 
investigation of the available prior art relating to the subject matter 
of the invention as claimed in the independent and the designated 
dependent claims. The examination shall be complete with respect both 
to compliance of the application or patent under reexamination with the 
applicable statutes and rules and to the patentability of the invention 
as claimed in the independent and the designated dependent claims, as 
well as with respect to matters of form, unless otherwise indicated.
* * * * *
    (b) Completeness of examiner's action. The examiner's action will 
be complete as to all matters, except that in appropriate 
circumstances, such as misjoinder of invention, fundamental defects in 
the application, and the like, the action of the examiner may be 
limited to such matters before further action is made. However, matters 
of form need not be raised by the examiner until a claim is found 
allowable. The examination of a dependent claim that has not been 
designated for initial examination may be held in abeyance until the 
application is otherwise in condition for allowance.
    (c) Rejection of claims. (1) If the invention claimed in the 
independent and designated dependent claims is not considered 
patentable, the independent and the designated dependent claims, or 
those considered unpatentable, will be rejected.
* * * * *
    4. Section 1.105 is amended by adding a new paragraph (a)(1)(ix) to 
read as follows:


Sec.  1.105  Requirements for information.

    (a)(1) * * *
    (ix) Support in the specification: Where (by page or paragraph and 
line) the specification of the application, or any application the 
benefit of whose filing date is sought under title 35, United States 
Code, provides written description support for the invention as defined 
in the claims (independent or dependent), and of manner and process of 
making and using it, in such full, clear, concise, and exact terms as 
to enable any person skilled in the art to which it pertains, or with 
which it is most nearly connected, to make and use the invention, under 
the first paragraph of 35 U.S.C. 112.
* * * * *
    5. Section 1.117 is added to read as follows:


Sec.  1.117  Refund due to cancellation of claim.

    (a) If an amendment canceling a claim is submitted in reply to a 
notice under Sec.  1.75(b)(3) and prior to the first examination on the 
merits of the application, the applicant may request a refund of any 
fee paid on or after December 8, 2004, for such claim under Sec.  
1.16(h), (i), or (j) or under Sec.  1.492(d), (e), or (f).
    (b) A claim in an application filed under 35 U.S.C. 111(a) will 
also be considered canceled for purposes of this section if a 
declaration of express abandonment under Sec.  1.138(d) has been filed 
in an application containing such claim in sufficient time to permit 
the appropriate officials to recognize the abandonment and remove the 
application from the files for examination before the application has 
been taken up for examination.
    (c) Any request for refund under this section must be filed within 
two months from the date on which the claim was canceled. This two-
month period is not extendable.
    6. Section 1.261 is added in numerical order under the undesignated 
center heading ``Miscellaneous Provisions'' to read as follows:


Sec.  1.261  Examination support document.

    (a) An examination support document as used in this part means a 
document that includes the following:
    (1) A statement that a preexamination search was conducted, 
including an identification of the field of search by United States 
class and subclass and the date of the search, where applicable, and, 
for database searches, the search logic or chemical structure or 
sequence used as a query, the name of the file or files searched and 
the database service, and the date of the search;
    (2) An information disclosure statement in compliance with Sec.  
1.98 citing the reference or references deemed most closely related to 
the

[[Page 69]]

subject matter of each of the independent claims and designated 
dependent claims;
    (3) For each reference cited, an identification of all the 
limitations of the independent claims and designated dependent claims 
that are disclosed by the reference;
    (4) A detailed explanation of how each of the independent claims 
and designated dependent claims are patentable over the references 
cited with the particularity required by Sec.  1.111(b) and (c);
    (5) A concise statement of the utility of the invention as defined 
in each of the independent claims; and
    (6) A showing of where each limitation of the independent claims 
and the designated dependent claims finds support under the first 
paragraph of 35 U.S.C. 112 in the written description of the 
specification. If the application claims the benefit of one or more 
applications under title 35, United States Code, the showing must also 
include where each limitation of the independent claims and the 
designated dependent claims finds support under the first paragraph of 
35 U.S.C. 112 in each such application in which such support exists.
    (b) The preexamination search referred to in paragraph (a)(1) of 
this section must involve U.S. patents and patent application 
publications, foreign patent documents, and non-patent literature, 
unless the applicant can justify with reasonable certainty that no 
references more pertinent than those already identified are likely to 
be found in the eliminated source and includes such a justification 
with the statement required by paragraph (a)(1) of this section. The 
preexamination search referred to in paragraph (a)(1) of this section 
must be directed to the claimed invention and encompass all of the 
features of the independent claims and must cover all of the features 
of the designated dependent claims separately from the claim or claims 
from which the dependent claim depends, giving the claims the broadest 
reasonable interpretation. The preexamination search referred to in 
paragraph (a)(1) of this section must also encompass the disclosed 
features that may be claimed.
    (c) If an examination support document is required, but the 
examination support document or pre-examination search is deemed to be 
insufficient, an explanation of the invention or how the independent 
and designated dependent claims define the invention is deemed 
necessary, or the claims have been amended such that the examination 
support document no longer covers each independent claim and each 
designated dependent claim, applicant will be notified and given a one-
month time period within which to file a corrected or supplemental 
examination support document to avoid abandonment. This one-month 
period is not extendable under Sec.  1.136(a).
    7. Section 1.704 is amended by redesignating paragraph (c)(11) as 
(c)(12) and adding new paragraph (c)(11) to read as follows:


Sec.  1.704  Reduction of period of adjustment of patent term.

* * * * *
    (c) * * *
    (11) Failure to file an examination support document in compliance 
with Sec.  1.261 when necessary under Sec.  1.75(b), in which case the 
period of adjustment set forth in Sec.  1.703 shall be reduced by the 
number of days, if any, beginning on the day after the date that is the 
later of the filing date of the amendment necessitating an examination 
support document under Sec.  1.261, or four months from the filing date 
of the application in an application under 35 U.S.C. 111(a) or from the 
date on which the national stage commenced under 35 U.S.C. 371(b) or 
(f) in an application which entered the national stage from an 
international application after compliance with 35 U.S.C. 371, and 
ending on the date that either an examination support document in 
compliance with Sec.  1.261, or an amendment or suggested restriction 
requirement and election (Sec.  1.75(b)(3)(iii)) that obviates the need 
for an examination support document under Sec.  1.261, was filed;
* * * * *

    Dated: December 19, 2005.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 05-24529 Filed 12-30-05; 8:45 am]
BILLING CODE 3510-16-P